7 Reasons Why Managing your Intellectual Property Assets on Excel Spreadsheet is a Bad Idea

Are Excel Spreadsheets Apt for IP Management

“You have a broken patent mining process if you are still using excel spreadsheets for managing ideas through patents.”

Managing ideas from innovation capture to patent expiration requires much different data handling than Excel spreadsheets are accustomed to handling. Some signs that your patent mining process is broken might include:

  • You feel that your business is not receiving enough invention disclosures to capitalize on your research and development
  • You are not in sync with application updates at the USPTO
  • Last-minute rush to outside counsel for filing patent applications just around the product releases
  • Your staff spends a lot of time with your outside patent counsel to remain abreast of new office actions and other correspondence from the Patent Office
  • Your legal bills are high because you require frequent status reports from your outside patent counsel

These are all signs that managing your Intellectual Property assets on Excel spreadsheets is ineffective. Here are some reasons why this might be happening:

#1 Excel Spreadsheets Does Not Handle Text Well

Using Excel for managing IP assets like ideas and patents is like using a phone’s numeric keypad to send text messages. Yes, we did it for a number of years, but it was highly inefficient. It led to many clunky abbreviations and typos.

Excel is very efficient at numerical and statistical functions. But ideas and the process of protecting them create a text-based narrative. Like using your phone’s numeric keypad for texts, it can be done, but the process is not optimal.

Excel handles text poorly. Large blocks of text either disappear or create rows so high they take up an entire sheet of paper, depending on the cell settings. As a result, an Excel spreadsheet for even a small startup business can take dozens of pages.

Think about the process of pursuing a patent. While some status explanations like “filed” may be short, others might be extensive. Summarizing an office action in a few words is often impossible. The notes needed at many steps in the process of patent prosecution can often require long explanations.

Without easily accessible explanations, you will need emails, phone calls, and meetings to bring decision-makers up to speed. Your Excel spreadsheet is useless since everyone who is needed to prepare responses requires more information than the spreadsheet can deliver.

#2 Excel Spreadsheets Provide Stale Data

The data in a spreadsheet is only as current as of its most recent update. An administrator must manually update Excel spreadsheets for the management of ideas and patents. This means that most of your data risks being out-of-date at any time. This does not mean that it is out-of-date. It means that you do not know if it is current or out-of-date since you do not know how recently the manual update occurred.

At various stages during a patent application’s life cycle, events can happen quickly or slowly. After filing, months may elapse before receiving an office action. But once an examiner sends an office action, resolution of the issues in a rejection could occur with a phone call. As a result, the case may move to allowance within a few days.

Staying on top of the prosecution is almost impossible with manually updated Excel spreadsheets. The information is often no longer relevant when you see it. Updates from the Patent Office’s PAIR system are instantaneous. But your staff still needs time to run your docket reports and manually update the spreadsheet.

Even reports from your outside counsel might take a few days to docket and be sent to you. After receipt, your staff needs to manually enter the new data.

Having an administrator search PAIR every day for new information can cost your business time and money. Moreover, having an administrator manually enters the PAIR status can create data integrity problems.

#3 Excel Spreadsheets are Error-Prone

Maintaining a spreadsheet in Excel is quite comfortable when you use it for numerical data. Excel will often help a data entry administrator find a typo during the analysis of the data. If the budget totals look off, the administrator knows where to go to identify the error.

A typo or other error in the text might not be as easy to identify and correct. For example, suppose your patent administrator hits CTRL + V instead of CTRL + C in a cell. The administrator just pasted data from the clipboard into your patent management spreadsheet that came from another application. Or, if the opposite happens, the data on the clipboard was overwritten by the data in the cell.

Excel Spreadsheets are prone to human error

At best, this creates inefficiencies as your patent administrator must go back and correct these typos. But if the administrator does not catch the typos as they occur, you could end up working with a spreadsheet riddled with bad data.

When you communicate with your legal department or outside patent counsel, you could end up talking about two unrelated cases because your Excel spreadsheet has duplicate application serial numbers. A nightmare scenario could happen when you instruct your patent lawyers to abandon the wrong case, and they cannot reverse the express abandonment.

#4 Excel Spreadsheets Provide Limited Filtering

The power of Excel spreadsheets comes when you need to turn a mountain of numbers into usable information. Spreadsheets, however, provide very few tools for working with a mountain of text.

Excel can alphabetize rows based on the first letters of a text field. They can search for a text string within a text field. They can even replace text strings once they find them. But Excel provides almost nothing beyond these built-in functions and any other tools for text analysis or manipulation must be created using macros.

This can be a problem when managing ideas and patents. Your business may find it useful to categorize ideas and patents to identify which departments had input into them. For budgeting purposes, you might need to tag patent applications according to which subsidiaries need to contribute to the fees and costs. But Excel provides no intuitive way to tag rows so that you can recall the tagged rows in a robust way.

Excel Spreadsheets Provide Limited Filtering

For example, if you need to know which patent applications are paid from your R&D budget or your manufacturing budget, Excel provides no intuitive way to filter text-based tags with an “OR” operator. As the filtering operations become more complex, you will need more customization of your Excel spreadsheet.

#5 Excel Spreadsheets Have Limited Collaboration Tools

One of the greatest benefits of cloud-based applications and databases is that collaboration becomes seamless. But for most Excel users, collaboration is clunky, with different versions of Excel spreadsheets sent by email. Stakeholders update the spreadsheet with their most current data and share them in group messages. But users can easily lose track of which is the most current version.

As a result, one user must manually maintain a master version with all the changes introduced by the various users. Again, this introduces costs in labor and time.

There are cloud-based spreadsheets like Google Sheets that allow collaboration. But bear in mind that patent law requires the strictest of control over your information. Under the Patent Act, you can lose the right to patent inventions that are publicly known. Under the Patent Office’s rules of practice, you lose attorney-client confidentiality for information that has been publicly disclosed.

While hackers might not specifically target your data, Google presents a valuable target that hackers could attack. By leaving your valuable idea and patent data on Google’s servers, you risk data loss.

On a side note: Would you want to know how your patent application is progressing at the USPTO compared to other applications in the same domain? 

The TIP tool offers statistics of the law firm and the examiner handling your case. Once the application is filed at the USPTO, and an examiner is allotted to your case, the tool indicates the relative performance of the law firm handling your case. The statistics revolve around the number of arguments, grant rate, and grant time. The tool also indicates the case health, for instance, it can tell you if a case needs your attention. There is a whole bunch of insights that you can gather from the TIP tool for strategic patent prosecution.

Request insights for any of your cases at the patent office using the form below.

#6 Excel Spreadsheets Provides Limited Visibility on Progress

Excel is an excellent tool for plotting numbers. A numerical graph can show trends and progress.

However, Excel spreadsheets do not have any comparable tools for plotting conceptual or text-based data. As a result, you have no easy way to identify bottlenecks in your idea and patent application process.

For example, your in-house counsel might take four weeks to send invention disclosures to your outside counsel. Similarly, your outside counsel might sit on office actions for two months before sending them to your legal department. By identifying timing issues, you can improve workflows and avoid unnecessary fees for late filings.

#7 Excel Spreadsheets Have No Inherent Functionality to Manage Workflows

An Excel spreadsheet can perform mathematical functions between the contents of two cells. But merging the text from two different rows and splitting text into two separate rows are not intuitive. This can make it difficult to manage all the ways that ideas and applications may evolve over their lifetimes.

More importantly, Excel spreadsheets do not produce action items, calendars, and dockets that identify tasks that must be taken care of within a workflow. Without a way for stakeholders to know what must be done, they can become a bottleneck in your patent process.

Moving Beyond Excel Spreadsheets

Law firms invest heavily in docketing systems. Clients kludge together spreadsheets. But there is room in the middle for tools that capture innovations and track the progress from ideas to patents. This is the role filled by Triangle IP.

Contact us to learn how to implement a streamlined and robust patent mining process at your enterprise.

Note: The preceding is general business advice and not to be construed as legal advice. IP laws vary by country and retaining licensed legal counsel is advised to confirm this information. Any expressed or implied opinions are of the author and do not necessarily reflect the views of Triangle IP or any other entity who might be associated with the presenter. We hope this content is helpful to you, but should not be relied upon without confirming the advice and accuracy with local legal counsel. Any comments or inquiries are not confidential so please discuss your issues directly with counsel.

7 Crucial Mistakes to Avoid while Patenting a Mobile App

Patenting a mobile app can be tricky, but it’s important to do so before releasing it to the public. If you don’t patent your app before launch, competitors can come along and copy everything that makes your product unique. With so many pitfalls along the way – from not understanding what’s patentable to not finding out about a potential competitor’s application until after you submit yours – it can be hard to avoid making mistakes altogether. In this post, we’ll explore some of the most common mistakes people make while starting the process of patenting their mobile app and how to avoid them.

  1. Building an app for patent and not to fill a gap in the marketplace
  2. Releasing a test version to the public before filing a patent application
  3. Choosing the wrong IP protection
  4. Being unable to identify patentable features in the mobile application
  5. Not researching what already exists in the market
  6. Drafting an Improper patent application (in absence of a patent attorney who’s an expert on software patents)
  7. Not being clear about “provisional” and “non-provisional” patent applications

Building an App for a Patent

Steven Covey said, Begin with the end in mind. When building an app, ask yourself what the end goal is – are you building this app as an arsenal in your IP portfolio or are you building this app to fill a gap in the marketplace, with money as a by-product? Having an honest and clear answer to this question is the first, crucial step. If you’re building an application for the sole reason that you could secure a patent on the same, think again. Strategic business sense doesn’t allow for that.

Building an App for a Patent

Disclosing to Public Before Filing a Patent Application

The objective of a patent is to create a monopolistic right. If you do choose to go down the patent route with your app, rolling out even a test version to the end user before you file patent applications is the wrong move. Unlike copyright, which subsists as soon as publication is made, the premise of a patent is secrecy until the time you make disclosure through your patent application. Remember, everything that is in the public domain before you file your patent application will qualify as prior art. And will of course become open to duplication completely nullifying the purpose of a patent.

Disclosing to Public Before Filing a Patent Application for your mobile app

Choosing the Wrong IP Protection 

Patents are not the only way to protect your mobile app or its features. You also have design patents that many choose as a preferred mode of protection for apps, especially to protect the UI and UX.  Facebook, in 2017 had made a design patent application for “The ornamental design for a display panel of a programmed computer system with a graphical user interface, as shown and described.” This design patent showcases the app’s UI/UX. 

Copyright protection can help protect the look and feel of your app. And buttons, features and slogans can be protected by trademark.

Also read: Patents v. Tradesecrets – Which Way to Go?

Being Unable to Identify Patentable Features in the Mobile Application

We’ve said it before, we’ll say it again. Knowing what not to patent is as important as knowing what to. When you’re looking at building a mobile app, research shows that it makes better business sense to patent certain features of your app rather than the app as a whole. We say this for more than one reason. For anything to be granted a patent, it must fulfill the criteria of novelty and non-obviousness. Here are some features of apps that have strong patent potential. 

  • Communication Improvements

Think communication with servers and all the changes happening there with changing technology. Communication improvements that you make to your app can be the subject matter of patents.

  • Backend Processing

How your app works in crunching numbers on the cloud is a potentially patentable feature. The flow of operations on a phone may not have a lot to patent. But the phone’s interaction with other systems is potentially patentable

  • GUI

Applying for design patents on graphical user interfaces can prove to be strong patents. Essentially, these patents help protect the look and feel of your app. A lot of big players including Facebook and Apple have strong design patent portfolios. For instance, check out this design patent by a popular mobile application company on the “Display panel of a programmed computer system with graphical user interface”. Presented below is a glimpse from the design patent.

Source: Google Patents

  • Lite Versions

Operations that happen on the phone in lite versions of your app are patentable. With the advent of AI, these use cases are rapidly increasing. With the way you train AI being a unique element, this can make for a strong patent. Constructing a claim around a mobile device specifically may increase your chances of success. 

Not Researching What Already Exists in the Market

“Having an idea is just work half done.”

The other half of the work includes confirming the feasibility of the idea. It becomes ridiculously important to conduct extensive market research. The chances of an idea being made into an app, especially in this crazy tech age, is extremely high. So before you embark on a patent journey, look for what is already around. 

A novel idea is an important eligibility criterion. This is because a patent is a way to show the world that your idea/invention is yours alone. So, you must make sure to document the whole process of development. It may be a good idea to also develop a prototype. This will not only help your patent attorney draft a comprehensive application but also to understand the impact of your application and what parts of it are eligible to be patented. 

Drafting an Improper Patent Application

A patent is only as strong as its application. A properly drafted application setting out claims that are specific and well-defined is key. If you have an app that utilizes more than just the mobile phone to process, your claim must state as such. This helps to create a stronger patent in the event of changes in patent laws or technology. Client and server level methods must be claimed. It is also important to include device and/or apparatus claims. The physical storage of the app software – computer readable claims – must also be included. 

A patent is enforceable for up to twenty years from the date of filing. The rapid growth of technology may render your invention completely redundant well within the 20 years during which your patent is enforceable. This makes it even more pressing for the patent application and claims to be well-drafted and comprehensive. All processes and potential technology developments must be factored in during the application process. Also consider how the final user will be interacting with your app in the future and how that affects the functionality of your app. Remember we went from floppy discs to CD roms and candybar phones to touch screens way faster than we imagined.

Also read: 3 Qualities of a High-Quality Patent Application

Drafting an Improper Patent Application while patenting your mobile app

Choosing the wrong type of application between a “provisional” and a “non-provisional”

When choosing to apply for a patent for your mobile app, you can either file a provisional or a non-provisional application. Provisional applications are the most common in the case of patenting apps. This is because they give you an added advantage of time and help secure your ideas. Also, a provisional application can be filed without you having to provide a detailed description of your invention. Here’s a round up of some reasons you would choose to file a provisional application: 

  1. It gives you a 12-month head start to develop the product before you are bound by disclosure
  2. It allows you to use the term ‘patent pending’ on your product
  3. It’s economical as opposed to non-provisional applications

Non-provisional applications on the other hand must be filed with a complete claim and specifications. They must contain a written description of the invention and a claim which legally defines the invention. This means this document makes full disclosure of your ideas and your app. When all aspects of your app are finalized and ready to go is when it makes sense to file a non-provisional application. 

Patenting a mobile app - Choosing the wrong type of application between a “provisional” and a “non-provisional”

Wrap Up

We’ll leave you with some final thoughts that you ponder on before going down the patent route:

  • The purpose your mobile application serves –  it’s important that the app fills a market gap
  • What’s the right type of IP protection various features of your app need
  • Which apps already exists in the market that are similar to your app
  • Have you disclosed the app to public before the patent protection
  • The timeline of developing and preparing the patent application in line with your business plan for the app

Understanding whether your app is eligible for a patent is only the tip of the iceberg. Whether this fits into your business plan for the same is a bigger consideration. The want for a patent must balance with the fact that doing so will ultimately make your innovation public. Remember, patents don’t make products successful. Patents protect great products, but it is your product that you need to invest in before you have a patent to protect it. 

Note: The preceding is general business advice and not to be construed as legal advice. IP laws vary by country and retaining licensed legal counsel is advised to confirm this information. Any expressed or implied opinions are of the author and do not necessarily reflect the views of Triangle IP or any other entity who might be associated with the presenter. We hope this content is helpful to you, but should not be relied upon without confirming the advice and accuracy with local legal counsel. Any comments or inquiries are not confidential so please discuss your issues directly with counsel.

IP Strategies SMEs Can Learn From Large Companies

Patent Stratgies SMEs can learn from Large Companies

IP strategies could be defined as establishing a plan of action to maximize the returns on IP investments. Let’s explore how SMEs can implement the IP strategies used by large companies to make the most of their IP budgets!

Large companies and small and medium-sized enterprises (SMEs) undeniably operate with different available resources and business goals. Aside from basic differences in numbers of employees, SMEs typically focus on niche markets while large companies tend to offer a wider variety of products and services. Large companies can raise money by selling shares of stock while SMEs often seek financing from outside investors such as venture capital firms or pursue opportunities to be acquired by larger entities. 

One area where differences between SMEs and large companies is particularly salient is how these entities approach their patent/IP portfolios. Some of those differences are driven by budgetary constraints, some are driven by the availability of manpower, and some are driven by business goals. In some cases, however, SMEs simply have not had as much experience with patents as larger entities. SMEs are unaware of how to change their approach to patenting in ways that provide strategic business advantages.

What are some IP strategies that large companies employ that SMEs do not, and how can those strategies be adopted or adapted by SMEs?  

IP Strategy #1 – Large Companies Employ Best Possible Legal Expertise

Not all patents are the same. In fact, many are not worth the paper they are printed on. That is because patents often issue with claims that are too narrow or with terms that are interpreted to mean something different than what was intended. 

The more elements that are included in a claim, the easier it is to distinguish the claim from what has come before and therefore establish patentability. That is why it is often relatively easy to obtain an issued patent with very narrow claims. The problem with such claims is that they are easy for competitors to get around. For example, a claim to an incandescent lightbulb with a carbon filament would not cover a competitor’s incandescent lightbulb with a tungsten filament. If the claim had been drafted instead to recite an incandescent lightbulb with a filament, this broader claim would better protect against commercially viable variations of the patented product. 

Sometimes a seemingly simple word choice is enough to render a patent completely worthless. In an infamous patent case involving baking dough, a patent was rendered useless because of the phrase “heat the dough to 450 degrees.” The phrase was literally interpreted to mean that the internal temperature of the dough had to reach 450 degrees, when what was intended was “heat the oven to 450 degrees.”    

In addition to general issues of claim interpretation, particular technology areas require specialized claim language and structure, and there are also many legal requirements that must be met for a patent to hold up in court. All of this adds up to the fact that patent law is a highly specialized area of law that requires a lot of training and skill. Large companies understand this and typically use established expert patent law firms or build their own in-house patent departments and budget for that expertise. In contrast, SMEs, due to their limited budgets, often try to cut corners by drafting patent applications themselves or seeking affordable (not necessarily expert) service provider, only to discover years down the road that a core part of their business is not adequately protected.

IP Strategies for SMEs

IP Strategy #2 – Large Companies Look for Broader IP Protection for Key Products

Large companies with significant financial resources often pursue a strategy of procuring and maintaining a large quantity of patents. As an example, Samsung Electronics had 76,638 active US patent application families across all its subsidiaries in 2019

Large patent portfolios allow more varied levels of coverage for key products while also allowing large companies to pursue protection for products or aspects of their business of lesser importance but that still have value. Large companies use multiple patents to protect a broad class of products and services around an invention, with follow-on filings used to cover new developments as they arise. For instance, different patents may have broad vs. narrow claims, or claims directed to different aspects of a product or service such as component parts, software elements, electrical systems, methods of use, and manufacturing aspects. The cumulative effect of such an approach is to minimize the importance of any one patent to a company’s business goals.    

Another aspect of large patent portfolios that large companies leverage to their advantage is their ability to deter potential infringers and competitors from trying to compete in the marketplace. It is time intensive and expensive to analyze a patent and determine whether it is invalid or whether a proposed competing product would infringe. The more patents a company holds in a given area, the more resources others need to spend to determine if they have freedom to operate in that area. 

In contrast, SMEs have budget constraints that typically drive them to focus on a small number of core patents. For many SMEs, every patent matters, and a single patent can make or break the company. SMEs are often under a threat to be gobbled up by large companies in the absence of a strong defensive patent portfolio.

Patent Strategies for SMEs

IP Strategy #3 – Large Companies Do More Strategic Patent Planning Than SMEs

Decision makers at large companies know that not every product needs to be protected in every potential market. For example, if the market for a product is only in the US and Europe, it doesn’t make sense to apply a one-size-fits-all IP strategy that includes patent filings in Canada, Japan, and Australia. However, if it is anticipated that a market for the product will emerge down the road in one of those countries, then a patent filing is justified.  

Large companies tend to employ more strategic planning when it comes to mapping their IP strategies onto what is known or anticipated about markets for a product, where manufacturing plants are planned, and the location of potential partners/licensees or competitors. They typically develop a clear plan early on for which countries are most important for patent coverage for a given product, and also reassess those decisions over time. If market forces change over time, large companies identify these trends and adjust their IP strategy accordingly by abandoning applications or deciding not to pay patent maintenance fees in different countries.

SMEs may either seek too few countries for protection in an effort to save costs, or pursue applications in as many countries as possible in an effort to make their portfolio more attractive to potential investors or acquirers – neither of which aligns their patent approach with the true market for their product.   

IP Strategies for SMEs

IP Strategy #4 – Large Companies Seek to Invalidate Competitors’ Patents More Than SMEs

Just because a patent is issued does not mean that it is valid and enforceable. Invalidity actions can be pursued either through litigation in court or via pre- or post-grant proceedings before the issuing patent office. For example, the US provides several avenues to challenge the validity of a patent after it has been granted, and almost 11,000 petitions to initiate such proceedings were filed in the USPTO between 2012 and 2019. Whether invalidity actions are decided by a US district court or in a proceeding before the USPTO, around 40-45% of all challenged US patents are determined to be invalid in whole or in part.

Large companies typically monitor and analyze their competitors’ patent portfolios on an ongoing basis. Such monitoring allows the opportunity to initiate offensive actions to invalidate patents of strategic business interest, but also provides additional benefits. Competitive patent monitoring can provide insight into competitors’ future product offerings and marketing strategies, allowing companies to modify their own market or product strategies in response. Tracking patent filings can also highlight untapped markets where a low number of patent applications have been filed and where a company can potentially gain a patent foothold or technological advantage.

SMEs often lack the resources or the sophistication to monitor and analyze their competitors’ patent portfolios on an ongoing basis. And hence it not in their capacity to initiate offensive actions to invalidate patents.

Intellectual Property Strategies for SMEs

What Can SMEs Do Differently?

You Get what you Pay for

The US Supreme Court has long recognized that a patent application constitutes one of the most difficult legal instruments to draw with accuracy. SMEs can take big leaps based on the strength of its core patents, they should consider not to cut costs especially from the drafting budgets.  

SMEs should avoid basing their hiring of a patent attorney or agent solely on who provides the cheapest services. Of course, budget is a factor. But sacrificing top notch skill and experience for the lowest bidder may not be a great move.

IP Strategies for SMEs

Drafting Patent Applications

SMEs should also avoid trying to have the application written in whole or in part by a non-patent professional. SMEs often think that they can cut costs by having one of their scientists or engineers prepare the application, and that a patent attorney or agent can just edit it or add claims to it. This is dangerous – a patent application is not an academic manuscript or a summary of technical specifications. While a write-up from the inventors is very useful to a patent attorney or agent, as described above there are ways of drafting patent claims that can either provide broad scope or severely limit protection. In addition, there are legal requirements that must be met for the application as a whole – for example, claims are routinely invalidated on the basis that a particular element was not described adequately or at all in the supporting text (specification) of the patent.   

Provisional Patent Applications

Another danger area is improper use of provisional patent applications. Provisional patent applications have relaxed requirements regarding formatting, supporting documents, and claims compared to full patent applications, but allow applicants to establish a filing date so long as the full application is filed no more than a year later. Because they can be produced faster and cheaper than full applications, SMEs often file bare-bones provisional patent applications with the intention of fleshing out their description of the invention in the full application. This is dangerous because provisional patent applications are still held to the same standard as full patent applications when it comes to legal requirements for describing the invention completely and in a way that explains how to make and use the invention. Patent cases abound where claims are held to be not entitled to the filing date of their provisional patent applications because of inadequate disclosure, with consequences that often result in findings of invalidity.  

A Hybrid Approach for Quantity with Quality

SMEs obviously have budgetary constraints on the number of patent applications they can file and maintain. There are, however, some cost-conscious approaches they can pursue to expand their patent portfolios without sacrificing quality. 

Even with large companies, not every patent application is treated the same. Some are extremely high value and receive extra time and attention, while others are of lesser value and receive merely the resources needed to competently provide reasonable coverage. SMEs can follow suit on their own scales by prioritizing patent applications into first and second tier filings based on their strategic value. A second tier of applications can be pursued while controlling costs by narrowing the scope of the drafting (and limiting the number of countries in which applications are filed – more on that below.) 

IP Strategies for SMEs

Where available, SMEs should also explore their options when it comes to continuation applications. A continuation application enables an applicant to pursue additional claims based on an earlier-filed patent application, so long as that earlier application has not been issued or abandoned yet. The continuation application is afforded the same priority date as the earlier application. Because it is often easier to get narrow claims allowed compared to broader claims, SMEs should consider narrowing claims initially or in response to an examiner’s rejection. This will allow them to quickly obtain a first patent with narrow claims (e.g., a specific version of a product) while filing one or more continuation applications to obtain additional related patents with claims of varying scope (e.g., to a range of different versions of the product). 

IP Strategies for SMEs
IP Strategies for SMEs

Work Smarter, not Harder

In order to avoid pursuing patent applications in either too few or too many countries, SMEs should, ideally, clearly identify their markets when the patent application is initially being drafted and develop a country-by-country filing strategy accordingly. Of course, that is not always possible. When decisions on where to file need to be delayed, SMEs should take full advantage of the time allowed to them when filing an international patent application under the Patent Cooperation Treaty (PCT). SMEs can file a provisional patent application followed a year later by a PCT application, and then they do not have to decide upon (or pay for) related patent filings in individual countries until 30 months from the filing date of the provisional application. 

The provisional to PCT strategy described above assumes that SMEs only want to file in one of the 153 countries covered by the PCT. If a market falls outside of those countries, then related patent applications need to be filed directly in those non-PCT countries within a year of the provisional application filing date. This also highlights the importance of making these decisions as early as possible.  

Global Patent Portfolio Strategy

When determining what countries to file in, SMEs should consider the following questions with respect to current markets and anticipated markets in the future:

  • Where do I expect to sell/manufacture/distribute the product?
  • Where is patent protection available (e.g. software is not patentable in Europe, Russia, Argentina, or Brazil)? 
  • Which countries are competitors filing patent applications in?
  • Where do competitors want to sell/manufacture/distribute their product?
  • Where are your potential investors or acquirers doing business?

In addition, SMEs should review their patent portfolios every one to two years and/or any time there is a substantial change in business focus to make sure that patent filings still align with business goals. This review should focus not only on the relevance of geographic locations, but also to make sure that applications and claims are still relevant to the business. If either a location or the scope of an application or patent are no longer relevant, sell/license it or abandon it.  

Patent Strategies for SMEs

Targeted Monitoring

Even if SMEs don’t have the resources to initiate invalidation actions against competitors, there is value in knowing what patents are issuing around your core product or technology. Many companies offer patent monitoring services through which an SME can be alerted whenever a new patent issues or patent application publishes meeting search criteria of interest. 

Some of the key benefits of patent monitoring searches include:

  • Gaining insight into competitors’ product market strategies and the technology areas they are investing in.
  • Identify new market opportunities where patent applications directed to certain inventions have not been filed.
  • Reassess business goals if a market is “too crowded” (i.e., too many patent applications filed on similar inventions.) 
  • Where a competitor’s patent or patent application has claims that cover an SMEs product, the SME can develop a strategy to either defend against a patent infringement action or proactively initiate an invalidity challenge. 
  • Identify potential infringers of the SME’s patents, allowing for attempts to either pursue a license or initiate a patent infringement action. 
Patent Strategies for SMEs

On a side note: Would you want to know how your patent application is progressing at the USPTO compared to other applications in the same domain? 

The TIP tool offers statistics of the law firm and the examiner handling your case. Once the application is filed at the USPTO, and an examiner is allotted to your case, the tool indicates the relative performance of the law firm handling your case. The statistics revolve around the number of arguments, grant rate, and grant time. The tool also indicates the case health, for instance, it can tell you if a case needs your attention. There is a whole bunch of insights that you can gather from the TIP tool for strategic patent prosecution.

Request insights for any of your cases at the patent office using the form below.

Conclusion

Let’s summarize how SMEs can implement the IP strategies outlined above. Large companies have in-house patent counsel responsible for the company’s patent portfolio, either performing the patent preparation and prosecution themselves or directing every move made by outside counsel. Such in-house counsel can oversee and carry out the types of strategic approaches described above. SMEs typically solely rely on their outside patent counsel to alert them regarding such issues.  Alternatively, SMEs should consider assigning someone in-house as a point person for patent management who is responsible for working with management and outside counsel to coordinate and implement various IP strategies.