What most refer to as a patent portfolio, we refer to as a collection of individual patents. A collection of patents has holes, gaps, over protection in some areas, under protection in other areas, and patents that have no particular value (i.e., extraneous patents). Such deficiencies limit the value of the collection of patents.
To us, a patent portfolio is something that is strategically designed from the outset and built according to the strategic design to provide a desired level of patent protection for technologies of a product line. The strategic design produces a patent portfolio that is balanced, has no holes, no gaps, and has the right level of patent protection for all areas where every patent matters (i.e., no extraneous patents). Such a patent portfolio optimizes value to meet the business’ needs and maximizes patent ROI (value to spend).
To exemplify the difference, imagine you’re planning to build a house. What’s the first thing you do? You hire an architect to design your house in accordance with all applicable state and local laws and ordinances. From the architectural plan for your house, you’ll know all of the building materials your house needs; you’ll know what the house will look like when it’s built–and while it's being built, you’ll know the costs and market value.
Now imagine not having an architect or an architectural plan for your house. Instead, you collect building materials from a variety of sources for years. Some sources are easy to get materials from and others are extremely difficult. Then one day, years after collecting building materials, you decide to build your house. You soon realize that you have six toilets but no bathroom doors or bathroom walls; your two-story house has no second floor; you have studs for roof, but no other roofing materials; and you have a bunch of materials that you can’t use at all. We could go on, but you get the idea.
When it comes to building patent portfolios, most are built like the analogy of building a house without an architectural plan. Engineers are the sources for the patents (i.e., the building materials for building a patent portfolio). Some freely disclose inventions while others rarely, if ever, disclose inventions (i.e. Having the stud for a roof but no other roofing materials).
Complicating the building of a non-architected patent portfolio is that most engineers are not experienced with what makes a good patent, which is a very difficult question to answer. As such, most engineers disclose inventions based on the technical significance of inventions, not their patent potential (i.e. having six toilets and no bathroom doors or walls).
Further complicating the building of a non-architected patent portfolio is that most engineers work on specific problems and disclose specific solutions to them (i.e. Your two-story house doesn’t have a second floor).
We view building a well-architected patent portfolio in a similar manner as building a well-architected house. Everything should be planned in advance. For a patent portfolio, one needs to determine the desired patent business objectives for patent protecting technologies of a product line. Then one needs to determine how many inventions should be patent protected. Then one needs to determine what it will cost, the likely value, and if it’s worth it. If it's not worth it, adjustments can be made until the right balance of cost, value, and patent business objectives is met.
Does your patent counsel provide you with an architected plan for building your patent portfolio? If not, it might be time to consider new patent counsel.
*Please note that this article is not legal advice; it is not a legal opinion; nor should you rely on it as legal advice or as a legal opinion. This article merely expresses the author’s general thoughts on a topic regarding the business of patents. Nothing in this article establishes any form of an attorney client relationship between you, the reader, and the author of this article.
