What is patent strategy?

I think of Patent Strategy as the set of principals guiding decision-making while building a patent portfolio. The phrase is also used to refer to patent commercialization strategies, but I think that is less relevant to most early-stage startups who are really more interested in building a product-based business than in building a technology licensing business (although, that can be an interesting startup business model by itself). The phrase can also refer to the detail-level strategy of crafting patent claims around prior art – I’ll call this claim strategy. That’s an important thing, but I think claim strategy is pretty complex and boring unless you’re a patent prosecution geek, so I’ll keep this at a higher level for now.

For the average entrepreneur building a patent portfolio, patent strategy is a matter of generally defining what he/she hopes to get out of the patent portfolio and planning ahead for the decisions that will be faced as time goes on. Early-stage startups are in a unique position to consider and develop a solid strategy that makes the patent portfolio an integral part of the business plan. However, like business plans, a patent strategy statement may be worthless by itself, but the process of developing one can be priceless.

I don’t think there’s any one-size-fits-all solution to developing a patent strategy. I think it really depends on the specifics of the industry you’re in as well as the details of your technology and how it improves on the status-quo.

With that said, here are some of the key questions to ask when developing a patent strategy:

How important are patents to your business plan?

Most business plans have a roughly one-paragraph section labeled “IP,” which basically describes the current state of any patent activity (patents planned, pending, or granted). Rarely do these sections describe the rationale behind the decision to file the patent applications that have been or will be filed. I think this is an often-missed opportunity. Having a clear rationale for filing patent applications can go a long way to keeping you from wasting money on completely worthless patent applications.

Patents represent one of many potential barriers to entry for competitors. The mix of barriers to entry significantly by industry, which means that in some fields patents are more important to a business than in others. For example, I think there are more factors weighing against filing a patent application in a lean internet startup (leaving aside the “software patents” bogeyman, which I’ll get to another time). In those situations, the main factors determining success are the speed and agility of the technology development – by the time a patent issues, the game is likely to be over. On the other hand, in fields like some Cleantech and Medical Devices which have much longer development times and higher capital requirements, patents can be a much more important component of the overall business plan.

What kind of patents do you want vs what kind can you get?

By “kind,” I’m referring to a general notion of the scope of the patents you hope to get. Patents are not all created equal – some are broad, most are narrow. Of course, everyone wants to get the disruptive, paradigm-shifting, controlling patent that will form the basis of an industry for the next two decades. The reality is: that’s an extremely rare situation, and odds are it’s not yours. If you’re in an old industry, and your technology is an incremental improvement, you’re looking at a situation where the best you can hope for is a few relatively narrow patents that will hopefully cover your product, but not a whole lot more. If you’re in a cleantech field, there’s a good chance are you’re improving or re-engineering technology that was originally invented thirty years ago.

So, the first step is really figuring out where your technology fits into the bigger patent picture so that you have some idea of what kind of scope you can hope to get from your patent portfolio. In some cases, it may be worthwhile to have only a few relatively narrow patents (maybe even slightly off-point patents) if that’s all you can get. It’s important to be realistic in this assessment – many entrepreneurs have a tendency to over-estimate the novelty and value of their inventions. Once you have an understanding of the patent landscape around your technology, you can start to map out the direction for your patent portfolio.

What is your technical differentiator?

What is it that sets your technology apart from the competition? You might call this the underlying magic. In technology-driven startups there’s usually some aspect of a company’s tech that stands out as a core difference that can be highlighted. That core difference can form the basis for the “picket fence” patents that I’ll talk about in a later post.

In addition to the core difference, it’s also a good idea to identify a few other technology silos in which you expect to see innovation. Having this sense of organization can help you know where to look for potential new inventions. I like to break down the system into a block diagram of components, and then figure out which blocks are likely to be areas where innovations will occur.

How do you identify new inventions?

Ideally, you have someone on your team whose job it is to keep an eye on developments to identify potentially patentable inventions. This person needs to be familiar with the technology, but I think it’s good for him/her to have some distance from it. So, I wouldn’t normally assign this role to anyone on the engineering team. The sense of distance helps to avoid the tendency for a patent portfolio to gravitate towards “gee whiz” technical features rather than business-strategic features. I like to collect everything that might be patentable and make filing decisions on a regularly scheduled basis, rather than trying to decide immediately as things come up.

How do you feel about external IP?

Sooner or later you may be faced with a situation where someone sends you an un-solicited offer to buy or license their patents. Sometimes these situations are hostile and adversarial from the start, but most of the time they’re not. I think it’s a good idea to think ahead of time about how you would respond to such an offer, both in principal and procedurally. Are you even open to thinking about outside IP? Knowing ahead of time where your organization stands on the question of Open vs. Closed Innovation can save a lot of time and hand-wringing when the issue comes up.

If you’re open to acquiring external IP, it may also make sense to seek out patents or patent applications that you may be able to buy or license from a third party. This can be a good way to build a patent portfolio quickly and sometimes quite affordably. Despite common perceptions, most patents that sell are sold for dollar values of only five or six figures.