Emerging companies are often advised to build a patent portfolio. While this is sound advice, portfolios are sometimes built in a haphazard manner, without alignment to business strategy. The resulting patents are frequently too narrow or too hard to enforce and the overall portfolio does not promote the organization’s key objectives. In the end, many companies make a significant investment in patents but wind up with disappointing results.
To overcome these challenges, we have developed a repeatable process to build a portfolio that adds value to the business by impacting competitors and providing monetization opportunities. This process reflects the best practices that we have encountered over many years of advising companies in the software and electronics industries.
The key elements of the process are:
1. Understand the Business
2. Strategize
3. Harvest Your Innovation
4. Prioritize Filings Using Strategic Criteria
5. File Smartly
6. Review – and Trim – the Portfolio
7. Buy Third-party Patents to Fill Gaps
Companies adopting this approach should at the outset appoint a “patent team” responsible for developing and implementing the company’s patent strategies. Lead members of a robust patent team typically include at least one key business leader, in-house counsel, one or two technology managers, and at least one representative from outside patent counsel.
“We’ve developed a repeatable process to build a portfolio that adds value to the business.”
1. Understand the Business
Success in building a portfolio is based on patent advisors having a comprehensive understanding of the business, including its competitive threats and opportunities. This discovery process is front-end–loaded but should recur at least bi-annually to keep strategy aligned with changing business conditions. Typical steps include:
- Review business plans and pitch decks. Discuss anticipated products and offerings.
- Understand exit strategies, if applicable, including likely buyers and their objectives.
- Review patent activity of competitors and likely acquiring companies (if applicable). This should be handled solely by outside advisors. The output of this review can include a landscape study graphically and quantitatively depicting the competitors’ patent focus.
- Inventory and assess existing intellectual property assets, including patents and patent applications, trademarks, copyrights, trade secrets, and related agreements such as license, development, employment, independent contractor, and non-disclosure agreements.
- Interview business and technical managers to fully understand the company’s business strategy and technology.
- Assess competitive products and industry trends.