Risk-y mission: strategies to win the patent-licensing war (or at least strike a good truce!)

If you’re lucky enough to have been raised in a family where several generations bond over a board game, then you’ll understand what I mean. A family favorite is “Risk The World Conquest Game.” Perhaps surprisingly, it is also a great analogy for capturing (and hopefully keeping!) patent territory that your company can use in the future for defense, attack, or the basis of negotiating a truce with competitors. Like the board game, achieving your mission in the patent portfolio war, means strategically positioning on the map the best of your patent resources – the equivalent of soldiers, cavalry, and artillery – until you are in the best position to respond to future opportunities or challenges arising due to offensive, defensive or cross-licensing patent scenarios.

Positioning your IP resources to achieve your mission – defense, attack or truce

The IP departments of large corporations play multiple roles. They must ensure corporations’ own inventions are protected – that’s the primary role that every IP department plays. They also need to ensure that enough of the right mix of patent categories are available in their portfolio so that – when and where required – the corporation can use them for defense (e.g. block competitors), attack (e.g. run an offensive patent-licensing program), or truce (e.g. enter a cross-licensing engagement with other corporations).

At any time, a single IP department needs to be in a good position to play each or every one of these roles. So, many of them run strategic-licensing programs to regularly sift through their existing active patents and identify their best ones – the artillery as opposed to foot soldiers – that can be used as and when a need arises.

In a world of transforming markets, where future competition can come from previously unexpected directions (a little like trying to hold N. America in Risk – you see your competitors coming at you from S. America and Europe, but forget that armies on Kamchatka can also attack you from Asia!), IP departments now understand that they need to ensure that their future portfolio is designed to support future missions.

Secure your patent battle lines for changing future conditions

To stay strong and flexible despite changing battle conditions, corporates must take a proactive and systematic approach to ensure that they have secured a competitive mix of patents, covering their own areas of innovation while ensuring that their patent portfolio is agile enough to cover future licensing strategies of defense, offense or truce. Proactively building the patent portfolio for the future gives corporates a clearer view of the resources that they will have at their disposal for future fields of battle. Further, planning for this future patent portfolio helps them to plug any holes, and align the portfolio to future vision and goals.

So, how do you start? First, you need to identify potential future competitors, or future cross-licensing partners. This can come from your existing competitor list, or alternatively from your corporate’s future goals or vision – for example, if you want to enter into a new product segment two years down the line, you better include existing players in that specific product segment as your future competitors or cross-licensing partners. Next, you align your future patent portfolio to the products or solutions of these competitors or potential partners.

Some corporates have already begun this process and have strengthened their position for the future.

They usually follow two approaches. First, they proactively create high-quality patents by refining their claims throughout the patent prosecution stage, so that when the final claims are allowed by the Patent and Trademark office (PTO), the claims map onto their competitors’ or partners’ products.

In the second approach, corporates wait for a notice of allowance (NoA) to be issued from the PTO, and then take a call to keep the patent active in their portfolio by paying the issue fees, or abandon it (to avoid issue and maintenance fees), or file a continuation application with amended claims (to seek the required kind of patent claims). Usually, the continuation application is filed with the claim set that maps onto competitors or partners’ products.

How Evalueserve helps corporations to win the patent-licensing war

With 18+ years’ IP and R&D business “battle experience” – plus in-depth knowledge of historical patent-licensing strategies, Evalueserve is the perfect ally to support corporations in positioning their patent portfolios for future success.

Evalueserve has an established patent-licensing practice and a patent-prosecution practice; and supports many, varying customers across the globe to set up large-scale, integrated licensing and prosecution teams. Specifically, we support customers to proactively create future “battle-winning” patents with a high licensing value, including real-time integration of Evalueserve’s licensing and prosecution expertise throughout the patent prosecution cycle to enable the granting of licensing-worthy claims.

Evalueserve supports customers at two stages of patent creation:

  1. During patent prosecution – we prepare responses to Office Actions (OAs) in such a way that the claims overcome examiner rejections and map onto a competitors’ products/solutions
    • The responses to OAs are prepared by our prosecution team, and the mapping product/solution is identified by our licensing team.
    • The seamless integration between the two teams ensures the granting of high-quality claims, with a high licensing value.
  1. After NoA – we make use of three-month period between NoA and issue payment date to check whether the allowed claim set has current or future licensing potential. Based on the check, we recommend:
    • Filing of a continuation application. Claims for continuation application are drafted by Evalueserve’s prosecution team, in such a manner that they map onto a competitors’ products/solutions that are identified by the Evalueserve licensing team; and/or
    • Payment of issue fees and keeping the patent; or
    • Abandonment of the application.

Contact Us. We’d love to hear what you think about our strategies for winning the patent-licensing war!

Shekhar Khanduja
Associate Vice President, IP and R&D Solutions Posts

Shekhar Khanduja is an associate vice president at Evalueserve, leading a team of highly-energetic IP and R&D searchers and drafting/prosecution experts. He aims to instil a passion for innovation in his team to continually improve IP and R&D solutions though small organic innovations and knowledge management. Raising quality and ideas to improve IP and R&D searches is a favorite goal – closely followed by experimenting in the kitchen to improve family recipes! Shekhar is hoping readers of this blog will join the conversation and share their ideas that he and his team can test internally to improve knowledge processes.

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