Strategic Patent Portfolio Decision-making: From filing to maintenance

The America Invents Act (AIA) changed U.S. patent laws from first to invent to first to file, making it all the more critical that patent applications be filed earlier in the process because date of invention is no longer relevant. But the AIA did much more than change the U.S. to a first to file system. The AIA also ushered in post grant challenges and created a Patent Trial and Appeal Board (PTAB), which many patent owners see as hostile to patent rights and favorable to invalidity challenges.

Of course, along the way the Supreme Court has significantly changed the law of patent eligibility, making patents much easier to successfully challenge in federal court. Thus, as the law has developed over the last several years it has become necessary to file faster, but better and more detailed patent applications that can survive a multitude of new procedural and legal challenges. Some innovations are no longer worth patenting in the U.S., or if patents are sought applicants might want to consider waiving publication if they are not going to seek foreign rights.

Then there are serious questions about the continued viability and value of legacy patents issued under different legal rules, which together with budget restraints must be factored into consideration when making decisions on which patents to continue to maintain.

When it comes to making strategic patent portfolio decisions, it is more important than ever to be informed, thorough and discriminating with your decision-making. In short, the number of strategic decisions available to those obtaining and maintaining a portfolio are greater than ever and, in fact, have only continued to explode in number. So many strategic decisions to consider throughout the innovation lifecycle, where should you start?

Join me, Carlo Cotrone (GE Oil & Gas) and Edmund White (CPA Global) for a free webinar on Thursday, June 1 at 2PM ET. In addition to answering as many audience questions as possible, we will tackle a wide range of issues that are critical for every enterprise to consider in today’s modern patent world. Among other things, we will discuss:

Patent Quality vs. Quantity: The value of a patent, for better or worse, is related to the likelihood that it could be successfully enforced in litigation. That may lead some to think there is a safety in numbers, but are fewer, higher quality patents strategically preferable?

Why some innovations are no longer worth patenting in the U.S., or if patents are sought, applicants might want to consider waiving publication if they are not going to seek foreign rights.

Questions about the continued viability and value of legacy patents issued under different legal rules, which together with budget restraints must be factored into consideration when making decisions on which patents to continue to maintain.

Why changes to patent law have made patents much easier to successfully challenge at the Patent Office and in federal court. And why these changes have made it necessary to file faster, but better and more detailed patent applications that can survive a multitude of new procedural and legal challenges.

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