Enter to open, tab to navigate, enter to select
Are You a Strategic Partner for Your Client and Their Patent Portfolio?
Practical Law Legal Update 2-594-3145 (Approx. 5 pages)
Are You a Strategic Partner for Your Client and Their Patent Portfolio?
by Practical Law Intellectual Property & Technology
| Published on 03 Mar 2015 • USA (National/Federal) |
A discussion of key issues counsel should address to help their clients view their patent portfolios strategically and maximize the patent portfolios' value. Specifically, this Legal Update discusses how proper patent portfolio management, including developing, maintaining and exploiting patent rights, is essential to value maximization.
Many companies spend significant sums of money creating, developing and maintaining a patent portfolio. However, without careful planning, a company's patent portfolio may not help increase the company's value, but instead could be a cost center that company executives may consider trimming or even cutting.
As a strategic partner, counsel should always consider ways to help the client maximize its patent portfolio's value, and effective patent portfolio management is an important part of this value maximization. By carefully considering and executing an appropriate patent strategy, counsel can help their clients manage the patent portfolio so it:
- Is aligned with the business's overall strategy.
- Adds value to the business.
If a patent portfolio is not properly managed, the company may:
- Lose valuable patent rights.
- Be unable to fully exploit and obtain appropriate value for its patents.
- Have:
- difficulty enforcing its rights against infringers; and
- insufficient assets to assert against competitors in response to competitive patent infringement claims asserted against it.
Obtaining and Maintaining Patent Rights
Counsel should initially help their clients define their patent strategy and implement appropriate policies and procedures for:
- Identifying potentially patentable inventions.
- Conducting patent landscape searches and studies.
- Filing new patent applications for new patents.
- Maintaining relevant patents.
- Ensuring freedom to operate.
All of these policies and procedures should support the client's defined patent strategy. Without this coordination, the resulting patent portfolio may not support the client's business objectives.
For more information on corporate patent policies, see Standard Document, Corporate Patent Policy.
Exploiting Patent Rights
Counsel should also help their client's exploit the patent portfolio. For example patent owners may exploit their patents by:
- Licensing patents to third parties in exchange for royalties or other consideration (see Practice Note, Patent License Agreements and Article, Patent Monetization and Valuation).
- Selling patents, for example, patents no longer providing business value (see Practice Note, Patent Portfolio Acquisitions).
- Using patents as collateral to secure financing (see Practice Note, Security Interests: Intellectual Property).
Again, these activities should support the client's defined patent strategy for ensuring that the client is maximizing its patent portfolio's value.
Enforcing Patent Rights
Patent counsel should also assist their clients to create an appropriate patent policing and enforcement strategy that aligns with the client's patent strategy and supports and maintains the patent portfolio's value. For example, a policing and enforcement strategy may require certain procedures for:
- Monitoring the marketplace for infringement.
- Investigating suspected infringement.
- Taking appropriate action against identified infringement, such as instituting patent infringement litigation. For more information on patent litigation, see Practice Note, Patent Litigation: Mapping a Global Strategy.
By helping the client create, develop and maintain a patent portfolio that aligns with the client's patent strategy and maximizes value, counsel can be a desirable strategic partner for their client.
For more information on key considerations for effectively creating, developing and maintaining a patent portfolio, see Practice Note, Patent Portfolio Development and Management and Patent Portfolio Development and Management Checklist.