“A customer-facing invention, in addition to being more easily detected, is also more painful for competitors to remove or avoid.”
4. Prioritize Filings Based on Strategic Criteria
Armed with a strategy and having established a steady pipeline of invention disclosures, the patent team can select innovations for filing as patent applications.
This selection process should be based at least in part on specific criteria that are determined by the patent strategy.
The review process should be somewhat opportunistic and should not so slavishly adhere to the strategy as to ignore the seasoned instincts of a strong patent team. Patenting is highly idiosyncratic to each invention and the prior art, products, and competition to which the invention pertains. What seems like a profound breakthrough may not (for a variety of reasons) yield a valuable patent. What seems like a modest advance may turn into a patent that tortures competitors. The patent team should be alert for (and empowered to act on) unanticipated opportunities.
In addition to company-specific criteria arising out of the patent strategy, common, generally applicable criteria for patent filing include:
- Alignment with Revenue. Does the invention relate to products and features that secure revenue? In other words, does the invention drive customer demand?Part of alignment with revenue entails balancing applications filed so that the portfolio does not bunch up in areas out of proportion to revenue contribution. For example, an important product or feature might represent 20% of a company’s revenue. If 70% of the company’s patent applications pertain to this product or feature, the patent team should consider shifting its focus.
- Competitive Targeting. Inventions that are, or are likely to be, infringed by a competitor should be assigned top priority. These patents are indispensable in fending off patent suits.
- Use in Product. Not every invention will find its way into the company’s products. Those that do are favored for patent filings. That said, master portfolio builders always look beyond the company’s products. Patented inventions, even if not implemented by the company, can be targeted to competitors.
- Ease of Detection. It may be hard to detect when a competitor is using an invention. Inventions that are easy to detect (such as by use or examination of the product or documentation) are favored for patenting.
- Customer-Facing. A customer-facing invention, in addition to being more easily detected, is also more painful for competitors to remove or avoid using.
- Patentable Subject Matter. Some inventions are more likely than others to be “abstract ideas” in the eyes of the patent office. Inventions not subject to this risk are preferred filing candidates.
- Novelty. No matter how incredible an invention may seem, if it does not meet the legal standards of novelty and non-obviousness, the patent office will not grant a patent on it. Inventions should be favored for patenting if they appear to be more likely to meet these standards.
- Standards. Inventions that may be essential to the practice of a standard are highly favored.
- Longevity. Technologies that will be deployed for more than five years are more favored as patent candidates.
- Taxes. If a company has controlled affiliates in foreign countries, patent filings in those countries can play a role in international tax planning, including transfer pricing optimization and compliance. These considerations should be identified and taken into account in assessing foreign filing decisions.
Once patents are scored, they can be prioritized for filing depending on budget constraints. Disclosures that are passed over for a given filing period should be retained for reconsideration (ideally within one year) in case the pipeline of invention disclosures slows down. Alternatively, such inventions can be filed provisionally if additional budget is expected to be available within one year to convert the provisional.