In order to leverage the value of intellectual property in an IP strategy, it is advisable to contemplate the synergistic benefits of combining various forms of IP. If an inventor determines that an invention is ready to be marketed, and the appropriate resources are available, it should be considered what other forms of associated IP should be pursued to strengthen the portfolio before entering a market. Trademark and copyright registrations are the most obvious; however, frequently an ancillary patent (including design patents) becomes the most important IP to increase value.
Once the inventor understands the market opportunities of an invention, reconsidering the nature of the industry ecosystem becomes a key next step. Are there complementary aspects of the invention within its value chain that have not been captured by the primary patent application? Such patent analysis feeds the considerations in developing the patent-drafting pipeline.
This is the classic “razors or blades” question, but if you look at the patent portfolio in the IP strategy that Gillette/P&G ultimately implemented, they fenced off an area of IP including 22 patents, covering blades, handles, springs, cartridges, and packaging, making it quite formidable for a competitor to penetrate. Thus, one would be well-advised to incorporate patent analysis into the process to look closely at the untapped opportunities that the invention can provide.
It should be pointed out that once a patent application has been filed after the patent-drafting stage has been finalized, it is considered “patent pending.” That being said, during the pendency of a patent application, there are no options to license the application per se because it is not an issued patent. However, technology licensing is certainly feasible as well as the trade secrets associated with the invention (such as monetizing your know-how into “show-how” through consultancy agreements).
Another way to generate revenue from your invention is to simply sell it. It is well known that the further one develops a technology into a marketable product or service, the larger the payoff will be for that individual. However, with reward, there is risk which should be factored into the IP strategy. Some “serial inventors” prefer to sacrifice the growth potential in exchange for immediate value recovery, without the commitment to development and commercialization.
In such tradeoffs, it may be worthwhile to move on to working on the next invention rather than becoming the CEO of your own new startup. Between these two extremes lies the joint-development partnership. There are those who view such partnerships as more problematic in the long run, but they do provide another option for sharing risks, and of course rewards.
In order to enhance a patent’s strength and value, a good sense of enforceability/assertability – the defense of patent claims against would-be infringers in litigation proceedings – is of paramount importance during the patent-drafting stage in today’s litigious environment. A patent attorney must keep abreast of past and current case-law decisions, on-going litigation, and changes in patent rules and law to develop an effective claim-drafting strategy in the patent-analysis stage. As the saying goes for IP strategy, the name of the game is the claim.
FlashPoint IP factors these wide-ranging aspects into the process of securing patent protection, whether in performing a patent search and patent analysis of the prior art, engaging in patent drafting of applications, selecting how and where to file, or prosecuting your claims to an invention to help you maximize value in an extensive array of practice areas. Our patent attorneys are adept at synthesizing the many facets needed to create a winning formula for your IP. Contact us to discuss your options regarding IP strategy and positioning, and how best to secure your rights.
