“To avoid loss of rights, applications should be filed before commercial launch or other public disclosure.”
5. File Smartly
Each patent application will require thought and planning to optimize its value; however, there are considerations that are common to most applications:
- Early Filing is Critical. To avoid loss of rights, especially outside of the United States, applications should be filed before commercial launch or other public disclosure. The ability to meet this deadline depends on a well-executed harvesting effort that collects and evaluates invention disclosures with sufficient lead time (preferably 60–90 days) for patent counsel to prepare and file the application.
- Search. Before preparing an application, a patentability search can be conducted to determine the closest prior art. The results of this search may indicate that meaningful patent coverage is unavailable, in which case the application process can be terminated before significant costs are incurred. If the search indicates patentability, the results aid in securing a patent that is more likely to be held valid in litigation.
- Provisionals. In many cases, provisional applications can be filed with less effort and at lower cost than regular, “non-provisional” applications. They are useful when time to file is short or when the company is not certain whether it wants to invest in a full-blown patent application. Provisional applications can also delay the expiration of a patent by up to one year, an important consideration for innovations with a long product lifecycle.Note that a provisional application postpones (by up to one year) but does not eliminate the cost of a non-provisional application. The filing of a provisional followed by conversion to a non-provisional application is usually more expensive than simply filing a non-provisional application at the outset.
- Continuations. A continuation application is a new application that claims the filing date of an earlier application. Continuation applications allow companies to update claim strategies as markets evolve, and thus enable more precise targeting of competitive products in subsequent years. As a general rule, any application of significant strategic value should be “kept alive” by filing a series of continuations.
- Track One. The U.S. Patent Office generally will take 2–5 years to examine and issue a patent. A Track One filing can reduce this pendency to 12 months or less. This may be appropriate to address the problem of menacing competitors, prepare for anticipated litigation, or bulk up a portfolio before raising capital. Tactics for accelerating prosecution may be available in other countries.
- Foreign Filing. A decision with respect to foreign filing should be made within 9 months after filing, re-applying at least some of the prioritization criteria described above. U.S. filings, especially crown jewel and other important applications, should be prepared with an eye to meeting the requirements of key non-U.S. jurisdictions (especially Europe).
- Cash Flow Considerations. There may be times when cash flow is a constraint on the intellectual property filing. There are a number of mechanisms that can be used by skilled patent counsel to adjust use of the various patent processes to slow down the processes to adjust costs to cash flow.
- Non-Publication Requests. A non-publication request may be made when making an initial patent filing. Otherwise, the patent application will be published 18 months after filing. The non-publication request must be withdrawn if the company decides to foreign file.
- Pre-Issuance Checkpoint. When an application has been allowed, the company should assess whether the claims as allowed still cover the company’s product (which may have evolved) and/or competitors’ products. If there are deficiencies in the patent’s claim coverage or if the patent appears to be particularly valuable, a continuation application should be filed as described above.
6. Review – and Trim – the Portfolio
The patent portfolio should be tracked in a database that records for future reference the parameters used to make the initial filing decision and that relates the patent to the company’s products, features, and competitors. As the company and its competitive landscape evolve, the patent strategy should be updated, and the portfolio reassessed against the updated strategy using the tracking database. For individual patents, this review should occur prior to issuance and again prior to the payment of each post-issuance maintenance fee.
The efficacy of the tracking process is highly dependent on the quality of the data input during the life of the patent, so the manager of the database should be attentive to data hygiene, including periodic audits.
Maintaining the portfolio (particularly outside of the U.S.) is expensive. Therefore, the company should not hesitate to abandon or (better still) sell or license patents and patent applications that over time are determined to have low strategic value.
7. Buy Third-party Patents to Fill Gaps
Despite everyone’s best efforts, no portfolio will be perfect. The initial strategy development and the ongoing portfolio review will reveal gaps, either in coverage of key products and features or in defensive patents that can be asserted in response to a third-party patent suit.
These gaps can sometimes be filled by acquisition of patents from third parties. There is a well-developed market for patents, including brokers (e.g., Tangible IP, Iceberg, and Ocean Tomo), marketplaces (e.g., IAM Market), and data providers like Richardson Oliver Insights (an offshoot of the similarly named law firm). Other sources of patents include corporations, including IBM, which have formal programs in place for selling patents. Bankruptcies also offer opportunities to purchase patents in bulk.