Patent Portfolios
December 6, 2012, Printed Electronics USA, Santa Clara, CA—Alex Turnbull from Avidity IP espoused the need for a reasoned and systematic patent process for all companies. The patents have to be strategic and generate value for the company.
Technology is always changing and the changes are mostly disruptive. For example, apps needed the smart phone to exist and their development can run in parallel with the changes in telecommunications. Once the data formats, networks, and other infrastructure were set, the apps changed the landscape in communications.
The value of a patent portfolio is growing rapidly. Patents are used as the basis for lawsuits by declaring the IP is infringed as a path to protect market share. Look at the Apple-Samsung circus.
The keys to a good patent portfolio are in having a pipeline of innovation, developing a strategy for protecting the IP, and having a company structure that provides freedom to operate. Developers need to chose where to file, when to file, and what amount of information to file as each of these areas can affect how the patents can be used.
Sources of information and strategic directions come from in-house developments, other business units, university agreements, university spin-outs, and research centers. The portfolio has to be business-driven, so the attorneys and inventors are not the best people to determine the IP addition to the portfolio. The CEO, CTO, and other managerial and technical experts have to decide the application parameters in a disclosure review.
Among the issues are careful choice of foreign filings, and annual reviews and culling of patents. The officers have to consider that the purpose for the patents is in license and associated revenues, fund raising by selling or licensing the patents, sales of the IP, and any enforcement activities.
The freedom to operate is the concept of strategically using patents, or knowledge of existing patents to mitigate risks, learn of potential impediments, and enable your designers to design around other patents. The considerations are in the costs of new developments versus the possibilities of infringement. The laws can impose heavy penalties of up to 3 times damages for willful infringement. Various industries are now creating databases to map the patent landscapes and help to track applications and areas of possible infringement.
