Patent Portfolio – The What, Why and How?
What?
We have seen big or sometimes even mid-sized companies boasting hundreds or thousands of patents in their name, and that is why their valuations soar into the billions and trillions of dollars. Ever wonder how this became possible? On the contrary, we usually do not see hundreds or thousands of distinct products corresponding to these patents in the market. For example, an automobile company with 500 patents to its name may not have 500 different models of vehicles selling in the market. Multiple patent applications are filed on a single product or a process and sometime for a single invention – this collection of patents owned by an individual or organization may include issued patents, pending patent applications, and any other intellectual property rights related to inventions or innovations, making is a portfolio of patents.
This brings us to the questions, why is it important to build and expand a patent portfolio? What is required and how is it possible to obtain such a large number of patents on limited number of products? The answers to these questions can be located as you read on.
Why?
It could be a mistake if inventors think that an attorney’s advice to file multiple patent applications relating to single product or method is unnecessary and instead claiming all the features of an invention in a single patent is more practical and cost effective.
On the contrary filing multiple patents for a single invention is a strategy that can be used to provide additional protection for different aspects of the invention. An invention may have multiple features, each of which may be patentable on its own. By filing multiple patents, each covering a different aspect of the invention, the inventor or company can establish a broader scope of protection for their intellectual property.
For example, an inventor may have developed a new type of electronic device that includes a unique user interface, advanced data storage capabilities, and energy-efficient hardware components. Each of these features may be patentable, and filing separate patents for each aspect of the invention could provide more comprehensive protection than a single patent covering the entire invention.
Another reason for filing multiple patents for a single invention is to create a defensive patent portfolio. In this case, an inventor or company may file patents on various aspects of the invention to create a strong patent portfolio that can be used to protect their intellectual property from potential infringement lawsuits.
Claiming multiple inventions in a single patent application may attract objections during prosecution for lack of unity of invention and will lead to filing divisional applications separately for the additionally claimed inventions.
Finally, filing multiple patents for a single invention can also be a strategic move to enhance licensing opportunities. By having a range of patents, an inventor or company may be more attractive to potential licensees, who may be interested in licensing one or more of the patented features of the invention.
Below are a few additional basic reasons why anybody should look into expanding their patent portfolio:
1. Earns the reputation of an innovative company in the market and is compared with big giants.
2. Having an abundance of patents under their wing, especially for start-ups, provides easy access to large amounts of funding and investments.
3. Enables to obtain an all-around, overall solid protection on the company’s innovation, leaving no chink in the armor.
4. Boosts the company’s valuation drastically.
5. A constant source of income for the patent holder through licensing of various patents from the patent portfolio.
How?
The following are the major activities required to be carried out at the company’s backend for building, developing, and expanding a dynamic and lucrative patent portfolio:
1. Identify the different aspects of the product or process that are patentable: Review the product or process and identify the different aspects of it that are unique or innovative. These aspects may include specific components, features, methods, or applications.
2. Determine the scope of each patent: Once you have identified the different aspects that are patentable, consider the scope of each patent. Each patent should have a specific focus and cover a distinct aspect of the product or process.
3. Conduct a patentability screening searches: Once you have identified the different aspects of the product, conduct a screenign search to determine if there are any existing patents or patent applications that may impact your ability to obtain a patent.
4. Prepare and file patent applications: Prepare separate patent applications for each of the aspects that you have identified. Each application should include a detailed description of the invention, including its unique features, components, methods, and applications. Depending on the scope and complexity of each aspect, you may need to work with a patent attorney to prepare the application. Once you have prepared the patent applications, file them with the relevant patent office or offices. It’s important to file each application as soon as possible to establish priority and prevent others from obtaining a patent on the same invention.
5. Manage the patent portfolio: Once you have filed your patent applications, it’s important to manage your patent portfolio to ensure that each patent is granted and maintained. This includes responding to office actions and paying maintenance fees and renewal fees.
6. Monitor for potential infringement: Once you have a portfolio of patents, it’s important to monitor the market for potential infringement. If you detect any potential infringement, consider taking legal action to enforce your patent rights.
It is common among inventors to see a single patent for a single product or method, but it is important to understand that if their innovative product or method is providing technical solutions to multiple technical problems. If the answer is Yes – a patent for each set of problem-solution may be filed separately.
Also, in cases where there is a component of the product/system or part of the method that can be used independently of the system/product or method in the same or different industries, a separate patent for such a system’s component or method’s part may be filed separately. Such separate filings solely depend on the business orientation and future licensing strategy of the company.
Conclusion
A patent portfolio is often used to protect an organization’s investment in research and development and to establish a competitive advantage in the marketplace. It can also be a valuable asset in licensing negotiations or in litigation to enforce the patent rights.
A well-managed patent portfolio can help a company to maximize the value of its intellectual property and can serve as a barrier to entry for competitors. Companies may choose to acquire patents or patent portfolios through acquisition or licensing agreements in order to enhance their own patent portfolios or gain access to new technology.
Overall, a patent portfolio can be an important strategic asset for businesses and individuals who invest in innovation and seek to protect their intellectual property.
Vedant Pujari, Partner
Shashank Raj, Senior Associate