10 Patenting Scenarios

Here are 10 different, potentially overlapping, scenarios in which patent applications might be filed or assessed. Each scenario requires different strategies and therefore a patent attorney needs to recognise which scenario is applicable when they draft, advise or assess.  We have provided only brief comments on each scenario since the actual strategy will obviously be more complex and will need to be tailored to the specific commercial situation.

1.  Tech Transfer Office.

When drafting for a university tech transfer office it is important to bear in mind that there will almost certainly be a disclosure of the invention by the inventors soon after filing. Therefore the strategy could essentially be to claim as broadly as possibly as downstream filings may not be possible.

2.  Sole Inventor

In the classic situation of an inventor who has an idea independently of a research company and with little funds, one must give realistic advice about whether a patent application is worth filing at all.  Filing an application and then selling it quickly is highly unlikely to happen and if this is the plan the inventor should try and identify potential buyers when thinking about how to proceed.

3.  A Scientist Setting up a Company

All decisions need to be taken very carefully as the early filings which are done when there are few resources may turn out to be the most important in value.  Ownership issues and the relationship to research done previously at another company or in a university need to be clear-cut.

4.  An Early Stage Company

There has to be a clear idea of when a product will be launched and how this fits into patenting timelines and building up a patent portfolio.  Competitor activity should be monitored, but it may be too early to know what patent strategies should be pursued against competitors.

5.  An SME Selling a Product

Having multiple layers of protection for the product, having freedom to operate and having patent cases that can be used in negotiations may be important.  Clearly it may be important to build up a strong defensive position and be aware of the possibility of cases being opposed or litigation happening.

6.  Strategy for a Large Company

Building up portfolios in areas of interest and ensuring that defensive portfolios are in place for important areas.  Having a detailed picture of third party rights and the freedom to operate landscape, and if necessary being prepared for oppositions and litigation by third parties, and in turn assessing how aggressive to be against third party patents.

7.  A Company Looking for Investment/Collaborators

The portfolio must be maintained with the knowledge that it will undergo due diligence.  Clearly regular filings each having a specific commercial purpose and showcasing the research the company has been doing will look more impressive to investors.

8.  Technology Sector

One should recognise the extent to which patents add value in the technical sector which the company operates in.  Many ICT companies may find that trade secrets and first to market advantages outweigh the benefits provided by patent.  However in other areas, such as biotech, patent protection is the norm and is integral to creating value.

9.  Taking Over a Company

Beyond the initial identifying of outstanding deadlines, the patent portfolio will need to be assessed quite soon to determine whether it needs fixing in any way, in particular whether new filings are needed in view of available research data or whether any existing cases should be abandoned.

10.  Investing in a Company

When carrying out due diligence, beyond determining whether there are problems (such as ownership issues) and looking at territorial coverage, it is important to see how adequately the portfolio protects the product.  Is broad coverage provided? Are the claims likely to be valid?  Are there multiple layers of protection?

You may also wish to see related articles Biotech Due Diligence Advice and Patent Advice for Research Companies.

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