Osborne Clarke | Intellectual Property Strategy: Checklist

Published on 28th Apr 2017

A technology or R&D business should develop a strategy for the identification, protection and use of its intellectual property assets. Such a strategy will inform key stakeholders in the business in relation to long-term goals and determine the protection measures required.

1. Patent filing strategy – first steps

  • Analyse your product markets – how and where does your business fit into the various product markets – analyse geographically as well.
  • Analyse your competition – how and where do they fit into the market?
  • You also need to consider the potential changes in the market and how that might affect your development strategy.

2. Patent strategy and your competitors

  • Competitors form a key part of any patent strategy, either to protect your own valuable technology space, or to close out areas that would otherwise be open to competitors.
  • The same analysis should be done geographically – rather than being reactive you must look to new markets into which you or your competitors may wish to move in the future.
  • Consider the principal purpose for your patent strategy – would you protect technology in areas which are not directly relevant to your business strategy but would cause difficulties for one of your competitors

3. Patent strategy – purpose

When making your assessment of strategy, it may be helpful to categorise patents in this way:

(a) vital “crown jewel” patents which cover your business’s core technology;

(b) “fence” patents which define the boundaries of your business activity;

(c) “work around” patents which may cover other ways of achieving core elements of your technology; and

(d) those which play a particular role, either in enhancing the portfolio i.e. improvements in a particular field, or closing out competitors’ activity.

This combination of patents will build a portfolio to ring fence your business’s activity, but also obstructing your competitors’ activities.

4. Patent strategy – the patenting process

  • Set in place patent searches in your technology space, together with a “watching service” which is a continuing alert for future applications in the identified space – it is a tool to give you valuable information on what is going on in the space, and highlight any infringement issues.
  • Searching and watching services can be costly, they need to be focused in areas most relevant to your business and the R&D undertaken.  The searchers should be well briefed as to your business strategy and objectives as well as the goals defined for your R&D and future technology.
  • The evaluation phase should be followed by a cost versus benefit analysis – Patent protection is an expensive process and a budget needs to be set which can be tailored to the business’s needs.  Long term aims for your strategy need to be identified so that the budget can be deployed most effectively.
  • Consider jurisdictions in which patents will be filed – filing in a number of jurisdictions is expensive and each needs to be carefully considered in the context of the strategy.
  • You should also consider (as above) how the patents are intended to be exploited – whether defensively to ring fence your businesses activities, or offensively to hinder competitors, or as a source of licence revenue from third parties.
  • The patentability of your inventions is the next consideration – technology of questionable patentability will lead to difficulties and additional cost.
  • When proceeding with patent applications the breadth of the claims of the application must be agreed – these must meet the needs of the strategy and integrate with the R&D team’s requirements.  All possible future business uses of the technology should be considered to allow for maximum exploitation value and scope of protection.

5. Patent strategy – additional considerations

  • Consider whether to patent or not – if the invention cannot be reverse engineered there is the option to rely on trade secret protection and avoid disclosure of the invention to the public.
  • Timing of patent application is important – educate employees on secrecy and non-disclosure of inventions to protect the patentability.
  • In some cases disclosure to the public may be appropriate, as in non-core technology -this ensures that third parties or competitors will not be able to obtain patent protection for similar inventions.

6. Patent strategy – communication

  • Senior management must understand the importance of IP and value for the business – sufficient resources will be deployed to protect and exploit IP and maximise value from R&D.
  • The IP protection team must also have a good understanding of the technology strategy for the business and the activities of the R&D team.
  • Consider creating an IP policy or strategy which can be published widely and internally with the business.
  • In an R&D or technology environment a system is needed to collect information about invention activity in order to inform the intellectual property protection strategy.  In addition, consider a direct connection between the intellectual property team and the business R&D function.

7. Patent strategy – legal aspects

  • Ownership of intellectual property is crucial – clear and effective employment agreements to capture IP are necessary, and these will include notification obligations as well.
  • Confidentiality is crucial to preserving inventions and their patentability – ensure employment contracts and third party agreements contain confidentiality provisions.  Enter into non-disclosure agreements prior to any evaluation of technology by third parties.
  • As regards third party confidential information, ensure you are not bound by restrictions on use, where you have independently developed technology.  This requires clear records of your R&D activity to prove independent development, and careful review of confidentiality agreements entered into by the business.
  • Review again whether patents have a defensive purpose, or whether they also have an offensive purpose – to generate revenue from licensing or other exploitation.
  • A clear position is needed on what level of infringement, if any, will be tolerated and the approach to be taken in relation to patent infringement.

If you would like further information on any of the points listed please contact one of us.

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* This article is current as of the date of its publication and does not necessarily reflect the present state of the law or relevant regulation.

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