WDC Patents - Building Intellectual Assets for Our Clients

The value and effectiveness of a patent portfolio can be viewed a number of ways, including the cost of building the portfolio, the estimated market value of the patents, and revenue that the portfolio is attempting to cover. Each of these methods has a degree of validity. But the first consideration should be the objectives of the portfolio. Ideally portfolio objectives are defined before any decision regarding writing or filing of patents takes place. Based on the objectives and a limited budget the best portfolio can be designed before any money is invested in filing. Some examples of patent objectives may include:

Your objectives may be one or all of these. An existing patent portfolio should be measured in terms of how it meets every defined objective. Ideally, the value to the company of each objective is quantified along with how well existing and potentially future patents can accomplish the objectives.

A technology is generally not specific to one product line. Patents covering technology need to be broad so as to cover many embodiments and sometimes completely different categories of products. The objective of such patents is to prevent a competitor from replicating the technology applied to applications within the scope of the patents. Examples of technology patents include Qualcomm’s fundamental CDMA patents. These cover more than Qualcomm’s specific products or even entire platforms and are a key source of royalties for them. One issue with technology patents is that they often seem speculative when initially filed. Since the patents usually cover a brand new approach, there is the possibility that the approach may not reflect "where the world is going". Valuable and broad technology patents are rare and can be very difficult to obtain.

A product platform is a basis for a number of specific products. Patents for product platforms may be narrower than technology patents but still have great value. They tend to cover those features that are critical to enabling what makes the platform different than competitors. Design around products may use the same technology but they will have to have differences in their general design approach. A good platform patent covers a feature that is shared by multiple products of a product line. A platform patent may also cover features that are required to be compatible with one or more generations of products. An example would be a patent covering formatting for a new DVD generation. Such patents can have enormous value for a substantial period of time.

Patents covering specific products are intended to prevent "knockoffs" and include both utility and design patents. They force competitors to invest in their own engineering but usually don’t provide a long term impediment. These patents tend to be easiest to obtain and also are hard to invalidate because they tend to be limited to specific new product lines. When such a patent is infringed it is often very easy to prove.

When a company decides to enter a new business, existing competitors may use their patent portfolios to block the new entrant. It may be possible to file patents that those competitors would value in the future enough to be willing to grant a license to enter. Patents that gain leverage with competitors are often also used to obtain licensing revenue. One process for identifying these patents is a process called "targeted innovation".

Just to confuse the issue a little, there is a category called the "hybrid patent". This is a patent that combines two or more attributes of technology, platform, and sometimes product specific patents. For example, perhaps an invention is the new use of a known technology for a new platform. Hybrid patents are a very common type and can have drastically varying scope and value. The key with a hybrid patent is to identify what is critical to make a given product or application effective. Sometimes a seemingly narrow hybrid patent may be the easiest to obtain and the toughest to design around.

All of the above objectives ’ from protecting technologies to gaining future licensing revenue can all be part of a comprehensive patenting strategy. Some of these objectives may seem more valuable than others ’ for example, it is generally felt that protecting platforms is more important than specific products. Keep in mind, however, that a comprehensive strategy that uses all of these techniques enjoys a certain synergy. For example, the same product may be protected by multiple patents including platform patents and specific product patents. Having such variety in the portfolio has a certain "belt and suspenders" effect. If a platforms patent is shown invalid, there are hybrid and specific patents that may still apply. One way to make sure that a variety of approaches are used in patenting a product is to conduct a patent "harvesting session". A work product from the harvesting session is to consider all the ways of defining claims based upon all the factors for a new product platform. These can be prioritized and selected based upon what provides the best comprehensive protection for a given filing budget.