Developing a Patent Strategy - A Checklist for Getting Started
Rajiv P. Patel, Partner, Intellectual Property Group, Fenwick & West LLP
For many technology companies, developing a patent strategy is an
important component of the business plan. However, for many the
approach for developing a patent strategy is more happenstance
than execution of a precisely defined plan. To help develop a
patent strategy, this document provides a checklist for getting
organized in preparation for developing a comprehensive patent
strategy for the company.
- Business and Patent Portfolio Goals
Starting in the development phase, the patent strategy
identifies the key business goals of the company. Clear business
goals provide a long-term blueprint to guide the development of a
valuable patent portfolio. In particular, the company should:
Evaluation of Company Assets
- List the business, technology, and product goals for the
- Identify key industry players (competitors, partners,
- Identify technology directions (within company and within
- Determine whether a patent portfolio be used offensively
(i.e., asserted against others; revenue generation, etc.),
defensively (i.e., used as a shield or counterclaim against
others who file suit first), for marketing purposes (i.e., to
show the outside world a portfolio to demonstrate company
innovation), or a combination of these.
- Meet with attorney to align goals, industry information,
technology information, and portfolio use core strategy.
The evaluation process begins by mining and analyzing
intellectual assets within the company. In this process, a
company organizes and evaluates all of its intellectual assets,
such as its products, services, technologies, processes, and
business practices. Organizing intellectual assets involves
working with key executives to align the patent strategy with the
business objectives. Here, the company should:
- Identify team members that will lead the mining and analysis
- Identify employees that create intellectual assets for the
- Identify the intellectual assets. To help determine this,
gather and organize documented materials. Examples of documented
materials include business plans, company procedures and
policies, investor presentations, marketing presentations and
publications, product specifications, technical schematics, and
software programs. It may also include contractual agreements
such as employment agreements, assignment and license agreements,
non-disclosure and confidentiality agreements, investor
agreements, and consulting agreements.
- Identify the anticipated life span for each intellectual
- Identify the market for each intellectual asset.
- Identify products/product lines incorporating each
- Identify those intellectual assets best suited for patent
- Review risk analysis with attorney involving competitor
- Prepare budget for patent strategy and patent
While the evaluation phase is in progress, the company can
move into the procurement phase. In the procurement phase of the
patent strategy, a start-up company builds its patent portfolio
to protect core technologies, processes, and business practices
uncovered during the evaluation phase. Typically, a patent
portfolio is built with a combination of crown-jewel patents,
fence patents, design-around patents, and portfolio enhancing
patents. Each patent may have a unique value proposition for the
- Establish a budget for patent portfolio development.
- Draft invention disclosures (see attorney for Invention
- Critically evaluate each invention disclosure in the context
of the patent strategy.
- Weigh risks vs. reward of a prior art search.
- Evaluate benefits and risk of provisional vs. utility patent
application with attorney.
- Forward invention disclosure to attorney for patent
- Over time, determine whether to conduct further competitive
analysis to study industry trends and technology directions and
identify patent portfolio coverage in view of same.
- Over time, evaluate risk vs. reward of studying patent
portfolios of competitors and other industry players to identify
how to further strengthen its patent portfolio.
A company that values its intellectual assets may set aside
time, money and resources to further enhance its patent
portfolio. To do this a company may move to the deployment phase.
The deployment phase may include licensing all or part of a
patent portfolio to others in the industry or to alternative
applications for the technology. Alternatively, it may include
asserting rights established by its patents, such as through
litigation. The deployment stage often includes high-level
management involvement. In this stage a company should
- Review patent portfolio to identify those assets that company
can sell for cash or use to spin out new business.
- Study competitor products for infringement considerations and
determine risks vs. rewards of cease and desist strategy or
- Evaluate the strength of competitor patent portfolios to
access the potential for counter-attacks.
- Determine risks and benefits of various enforcement options
(cease & desist; cross-license; etc.).
The outline above gives a just one overview of a potential
patent strategy. With any patent strategy, some key
considerations will include commitment from all levels of
management and execution of the strategy once it is assembled.
Companies that take the time and effort to develop a patent
strategy will be reap many rewards for the time, money and effort
spend early on as their business continues to grow and