Patent problems pending

Despite a continuing focus on cost cutting, the patent portfolios of many blue-chip companies still have a poor alignment with market and technology strategies, and are insufficiently ‘tuned’ to corporate and technology goals. Given patents are typically outputs of R&D, and R&D must, by its nature, support future strategic goals, why is there such poor alignment between patent portfolios, R&D activities, and market and technology strategies?

Filling the silos
A key pitfall when protecting new product innovation stems from the fact that the IP team often only becomes involved towards the end of product development. Patent applications are produced that protect the product itself but do not take into account future product variants, competitive reaction or whether there are platform technologies that could have broader value across the business (or even for other businesses). This could be described as a ‘siloed’ approach to IP generation.

Following a siloed approach can result in patents that protect specific products, but only provide short-lived protection. This is important for consumer products where demand can change quickly, requiring products to be adapted and developed further.

Incremental developments will help maintain a brand’s top spot in the market, but may not be patentable as the original patent filings may make the incremental developments obvious in the eyes of the patent examiner. A good patent strategist will anticipate future product generations and use the US continuation/continuation- in-part system to protect the new generations at appropriate points.

Portfolio maintenance
Poor patent portfolio alignment can also arise as a consequence of fast technological ‘churn’ and often goes hand in hand with internal processes that are risk averse. This is especially true in markets where the pace of technology innovation is high – for example, consumer electronics.

The easy option is to simply pay maintenance fees and not look too deeply at what really supports valuable products or fits with the strategic direction of the company. The in-house process of portfolio maintenance generally errs on the side of caution and often will not be well informed about changes to the product range or external market/technology evolution.

This can lead to unnecessary maintenance of patents that support discontinued products and technologies. The consolidation that follows M&A activities typically leads to a ‘disconnect’ between the (possibly) more efficient merged businesses and their now-inefficient patent portfolios.

The patenting process should be approached strategically, taking advantage of the various fixed and variable length delays between initial filing and grant in a particular geography. These delays provide advantages in identifying what to pursue, where to pursue it and cost management.

Strategic patenting
So how best to use these delays to reduce both cost and risk? One option is to file an initial patent application in the national patent office as late as possible – typically close to the product’s launch date. This gives the greatest flexibility when choosing international geographies. It does carry the risk that a competitor may be able to file in the same area beforehand, and this should be borne in mind in areas where there is much competition.

If an early priority date is important – for example, in a highly competitive technology area, the time between the initial priority filing and publication must be used to the best possible effect – generating material that can be added to this initial filing to cover as much ground as possible and open the door for additional continuation filings (US only).

The strategic pursuit of IP should be at the product and technology level. At a corporate level, IP policies should be used to guide IP development. It is also worth involving the marketing department to influence IP strategy at a product or technology level; their guidance on market introduction and evolution will provide useful insight into the development of an appropriate protection strategy at the product and technology level.

For further information Sagentia is a global innovation, technology and product development company: www.sagentia.com; Email: info@sagentia.com