Strengthening Patent Value Throughout the Patent Prosecution Flow

By Mike McLean
December 1, 2017

Patents allow you to protect your inventions, license the use of the inventions of others, and introduce additional revenue streams to your business. Patents also require investments of time and money to maximize their usefulness.

By focusing your investment and efforts on optimizing the usability of patents of value, you can:

  • Improve the validation that your applications read on markets of interest, and that further your portfolio goals
  • Help tune a patent portfolio by developing indication of use (IoU) of some applications regarding products of interest, and early cost savings by avoiding applications with challenges or concerns
  • Use applications as soon as they are granted
  • Improve utilization of filed inventions by identifying continuation opportunities

Patent Value

For the purposes of this article, “value” refers to whether a patent claims economically relevant innovation, and how easily that claimed innovation be detected and proven. It is measured by two critical features:

  1. Applicable claim scope: it encompasses innovation having significant economic value
  2. Detectability: infringing innovation can be identified and proven

Rating Patents

By evaluating patents, we can assign a quality rating to each one of A through D. The following table provides a high-level overview of what each rating means.

As patents are evaluated, some will fall easily into these defined categories. For example, patents that are not detectable and are not known to be used in the industry would be considered low-value and are candidates to abandon; key portfolio drivers which can be easily detected or which are known to be used will be kept and maintained.

There is, however, often a gray area in a portfolio where very good patents have not yet been adopted by the industry, but which may become foundational patents in the future as the market evolves. Patents in this area take a higher degree of skill to evaluate appropriately, and can be candidates for patent strengthening programs.

Patent strengthening exercises can increase the rating, usefulness, and likely return on applications.

Opportunities to Strengthen Throughout the Prosecution

Prior to Filing

Improve your screening of R&D innovations. Ensure that you are reviewing your inventions in light of the big picture: instead of considering the inventions in and of themselves, take into account the current market landscape, emerging innovative trends, and described competing technologies to broaden your perspective.

Cover the bases. There are four key elements that should be considered when deciding to create an application:

  1. Use (prior art) – gather prior art that shows the invention may be patentable
  2. Ease of detection – consider how your innovation can be detected; by which method(s), at what cost, and under which conditions
  3. Ease of workaround – consider how easily someone could work around your innovation without infringing upon it and still achieve the same results
  4. Economic importance of innovation – determine roughly what the value of your innovation will be if it is granted; would there be licensing opportunities, how lucrative would they be and why

Gathering the information above will help you in two ways: first, it will confirm whether it is worthwhile and cost-effective to seek a patent for the innovation, and second, it will help you to refine the details of your application.

Throughout The Prosecution

There’s a lot of wait time in patent prosecution. Between your priority date and that communication, you can continue to look for IoU on all your claims.

Un-allowed claims – determine which of the un-allowed claims has IoU; the prosecution team would focus on getting these claims allowed. Additionally, continue to collect evidence for the remaining elements of the claim.

Allowed claims – complete the IoU on allowed claims so they can be used as soon as they’re granted. Gather additional IoU wherever possible to strengthen to evidence of use (EoU), which can then be used to put a target on notice.

Continuations – if an element is missing in the current claim, but is found in the disclosure, or if there is another innovation in the disclosure, prosecution would likely file a continuation.

Abandoned claims – where IoU is problematic, determine whether the application could be abandoned. Problems can include a variety of factors, often related to detectability:

  • Where an invention is expensive to detect
  • Where an invention is very difficult to detect

Abandoning these claims may result in cost savings so that other applications may receive greater attention.

Continuations

When a claim is allowed, there is a three-month window where continuations can be filed before the patent is granted. All applications with allowed claims should be checked within this timeframe to determine if a continuation opportunity exists; patent families with continuations are more valuable, and can be tuned to individual targets.

If an allowed claim has EoU, an infringer can be put on notice as soon as the patent is granted.

Strengthening Programs

Many organizations with larger portfolios are moving toward pointed or ongoing patent strengthening programs, where a set number of applications aligning with their corporate goals are reviewed on a regular basis. The following use cases have been gathered from experience with our clients:

Defend and abandon – A defending company that was anticipating a renewal regarding major licensor added 40 IoU from among their applications to their overall defense preparation, and identified a number of applications to abandon based on the analysis.

  • Considered ~1500 applications, ~200 rated A

Strengthening and continuation – A major technology company continuously strengthens their allowed applications, adding ~30 IoU annually to their inventory regarding a broad range of companies, and many applications recommended for continuation.

  • Considered ~750 applications annually, ~75 rated A

Prioritized strengthening – A semiconductor company selects 30 applications per week for review, where the A-rated patents are read more deeply. IoU is prepared each week for one application from the weekly list, regarding multiple companies of interest.

Conclusion

There are many ways that patent strengthening can improve a portfolio. By focusing on optimizing the quality of patents of value you can achieve maximum ROI from their use, and you can minimize the cost by avoiding lower-value applications as well as their future maintenance.

The Author

Mike McLean

Mike McLean is the SVP IP Services at TechInsights, where he leads a group of patent professionals who help technology organizations make effective decisions about IP investments and to maximize the returns on those investments. TechInsights’ approach to the patent portfolio services leverages an interdisciplinary, in-house engineering team, experienced in mapping technology to patent claims and understanding cross-market applicability, to uncover and support patent value.

Mr. McLean has established a center of excellence around patent portfolio management and patent assessment at TechInsights. This practice enables data-driven decision making and effective identification of patent assets for enforcement or sale, provides guidance on invention selection and patent acquisition programs, and ensures the alignment of patent portfolios with business strategy. In 2017, Mr. McLean was again named to the IAM Strategy 300 list of the world’s leading IP strategists.

For more information or to contact Mike, please visit the Company Leadership Team Profile Page.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

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