In the view of substantial global protection, enterprise should pursue protection only when and where a value proposition can be rationally articulated. Thus, seven hallmarks of rational global patent strategy:
1. Decisions are informed by innovation roadmaps and market at large: decision makers’ should have a holistic picture of the enterprise’s short and long-term commercial strategy, the relative footprint of competitors and possible future of industry. For instance Apex’s patent review committee should consider (a)how planned improvement to products APX fits into Apex’s broader strategy, (b) the reasonable likelihood of Nemesis (c) estimated damage to Apex’s business if patent protection is not secured.
2. The strategy distinguishes between patent claim and described technology: companies should be mindful of the claims scope at the time of initial filing decisions, during patent prosecution and after patent issues. In assessing whether to maintain a family a family of granted Apex patent filed to protect a prior version of product APX.
3. This technology is cognizant relative strengths and weakness in patent system around the world. Patent protection system system vary, sometimes markedly with respect to subject matter eligibility, quality of examination, strength and enforceability of issued patents, the level of certainty and fairness accorded patents holders and third parties etc. and because system evolve, assumption based on past experience may no longer be valid. A rational global patent strategy monitors current conditions and emerging trends. The U.S. Chamber of Commerce International IP Index and similar resources can help companies decide whether to include a given country in a protection strategy.
4. Revenue Data is used to guide strategy: decision makers may know the primary countries in which company products are manufactured or sold. Accordingly country specific product revenues data should be sought from sales or finance teams. Apex leaders should drill to understand what portion of 50million dollar global revenue for product APX, is attributable to specific countries where patent protection is in place.
5. The technology supports monetization efforts: a rational global patent strategy seeks coverage consistent with company’s broader monetization strategy. Apex may decide to file and maintain patents in countries of secondary commercial importance in the near term if it anticipates future opportunities for licensing, enforcements, transfer.
6. The strategy is continuously confirmed: Whether patent protection continues to be beneficial should be revisited periodically, such as through dialogue between IP counsel and stakeholders during patent prosecution, as a part of portfolio pruning rhythms, and on an ad hoc basis. Possible reasons for dropping a patent asset include (a) recognition that the anticipated or granted claim scope does not provide sufficient value, (b) a change in the innovation roadmap or product obsolescence that renders patent protection unnecessary, (c) a weak or weakening patent system in the corresponding jurisdiction, and (d) pivoting of the corporate monetization strategy. A reflective approach ensures that, as circumstances change, the enterprise adapts its global patent strategy to redirect resources to more productive uses.
7. A creative mix of tatics is employed to reinforce rationality: to promote objective decision makers assign scores to relevant criteria, such as level of innovation, monetization opportunity, and detectability of infringement. Another approach is to establish a corporate IP policy. That restricts patent filing to a maximum number of countries per invention, absent sufficient justification on a case by case basis. Such an approach encourages decisions makers to be thoughtfully identify countries having the greatest strategic importance.
To facilitate focused, efficient pruning of IP assets, each patent record in an enterprise’s asset management database should include metadata specifying associated products, license agreements, and/or other commercial details. Further, patent pruning reviews should periodically consider whether claim scope of a patent remains adequate. From a filing perspective, patent searches, Patent Cooperation Treaty (PCT) applications, the Patent Prosecution Highway (PPH), and negotiated fee arrangements with law firms and translation service providers can be leveraged to reduce the costs of global patent filings, while also increasing patent quality.
