November 8, 2022
By Robert Cantrell - Registered Patent Agent
Between 2007 and 2010, I contracted high-stakes patent validity searches for law firms supporting some of the largest corporations in the world. These were not your ordinary searches. Contracts could reach six figures. But the costs were trivial for the corporations compared to the alternative.
We directed most of our high stakes searches against patent claims asserted by Non-Practicing Entities (NPEs). Our success rate was high; I do not recall the team ever failing. We had a significant advantage in most cases. Whereas patent applicants often commission basic prior art searches before filing their applications, and whereas patent examiners have a limited time to perform their prior art searches, we could search for prior art for as long as our clients wished and fly to places, such as university libraries, that were open to the public but unavailable online.
The searches we conducted remind me how vulnerable small practicing entities can be if they anchor their success on one patent. Another enterprise with the resources and the incentive may have a good chance of invalidating claims by uncovering unconsidered prior art. I think about that possibility whenever I draft a patent application, mindful of how other entities might challenge or design around the claims.
What should you do if you are a small practicing entity? Appreciate the importance of leveraging your patent while developing contingencies. Incorporate the patent as one part of your overall marketing effort. Allow your patent to become the 5th P in your marketing 4 Ps to create Product, Price, Promotion, Place, and Patent—where your patent may serve equally as a marketing tool and as a legal barrier to competition. And keep your patent position alive through continuations, continuations-in-part, and new filings so you can better handle challenges from parties who may not have your best interests in mind. Your goal is to make negotiating with you the better option than trying to invalidate your patent position.
By Jose W. Jimenez, Esq – Former Chief Patent Counsel & Registered Patent Attorney
As products evolve, whether in a start-up or a Fortune 500, as Robert recommends, it can be vital to add the last “P” – Patent – as an active component of the first four Ps; with market challenges and litigation being primary goals. Just as “Price” has to be selected in context with new entrants and alternatives or substitutes, or “Placement” --the targeted segment of the market for the product --must align with your market strategy, it is prudent to revisit the status of your patent filings to determine if filing a continuation or continuation-in-part is in order (extensions of your original filings to capture changes or a competitor’s features). Such a review may also drive an improvement patent filing that you missed. Good marketing and sales professionals know that managing the 4 is an active exercise throughout product lifecycles. As patents also protect revenue and market share and are an ongoing expense to the enterprise, so should you include them in your review.
Patents can also be monetized, out-licensed or sold, or they can be simply retired because their value is minimal compared to the cost of keeping them alive. A good example is when it comes time to pay US maintenance fees or foreign annuities to keep these patents alive for enforcement purposes. These are a true short-term expense to the venture that impacts profits or cashflow. Since money is a limited, it is worth “culling the herd” of your patent portfolio in a team effort between sales, operations and legal to ensure good business decisions are made to continue with the patent portfolio as is or implement revisions.
So, listen up all you MBAs and sales and financial professionals, you may be leaving money on the table or just throwing it away by not incorporating “P – Patents’ into your strategy. Just as employee turnover is difficult to quantify, intuitively it is still a real cost to an enterprise and not one ignored by the “C-suite” when your talent is walking out the door. So, it is with your patent portfolio, so reach out to us so we can tell you how we can help.
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