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I started working with a new client several years ago to help them build a valuable patent portfolio. They already had a few patents, but the patents were of little value. Although the patents were well-written, they did not protect inventions that were actually valuable to the company.
When preparing those patent applications, the company made a classic mistake.
They hired a patent attorney to write good patent applications for the wrong inventions. Instead of identifying all of the company’s inventions and prioritizing the most valuable inventions, the company randomly selected a few inventions for the patent attorney to protect. This is a huge mistake and a big waste of money because the most valuable inventions are often missed, so they are never protected as a business asset.
Unfortunately, I see this situation far too often. Companies send inventions to a patent attorney to prepare patent applications without first identifying and evaluating every invention created by their team.
There is a better approach.
You probably understand the importance of using patents to protect your critical inventions. But you need more than just a patent attorney to be sure you properly protect your most valuable inventions.
Based on my experience working with hundreds of technology companies (both as a patent strategist and as a patent attorney), I know first hand how critically important it is to have a patent strategist who understands how to work with your team to identify, prioritize, and protect your best inventions.
As noted in the case above, if you rely exclusively on a patent attorney, you may miss out on protecting critical inventions because the identification and prioritization steps are often ignored. If you jump to preparing a patent application without being sure you identified and prioritized every invention, you may be wasting time and money protecting the wrong inventions.
Those low-value patents for the wrong inventions provide a false sense of security because you think your key inventions are protected. But, if you don’t protect the best inventions, your products may not have the patent protection you expect. For example, if you don’t patent your critical inventions, any competitor can use those inventions for free.
An experienced patent strategist works with teams in tech companies to identify, prioritize, and protect (with patents) the company’s highest value inventions. A patent strategist also helps design patent portfolios with high quality patents that are tailored to the company’s goals.
A patent strategist follows a successful process, such as:
The patent strategist monitors the growth of the patent portfolio to ensure that it is providing maximum value to the company and supporting the company’s goals. The objectives of the patent portfolio may change over time as the company’s goals and priorities change.
A U.S. patent gives the owner the right to exclude others from making, using, offering for sale, or selling the patented invention or importing it into the U.S. (35 U.S.C. 271)
When you work with a patent strategist, you will protect the most important inventions that give you:
These are important benefits that protect your company’s R&D investment of time and money while also strengthening your team and competitive edge.
To further illustrate the importance of a patent strategist, here’s another experience I had several years ago.
I started working with a technology client when it was still in stealth mode. They were creating new technology that was changing computer systems throughout the world.
We started creating the company’s patent strategy while the company was in stealth mode. Initially, I worked with their team to identify critical inventions in the first product. We prioritized the initial inventions that were likely to provide the greatest ROI to the company and aligned with the company’s goals. Patent applications were prepared for the top five inventions based on the prioritization.
These patent applications were filed before the company came out of stealth mode to protect their core technology and preserve international patent rights.
After the company publicly announced it’s new product, the initial product continued to expand and provide additional features. As the product grew, we continued to identify and evaluate new inventions. Additional patent applications were filed to protect the most important inventions related to the new product features.
As the company’s team grew, we continued to train new team members how to identify and evaluate inventions. We also implemented invention mining sessions, invention contests, and other activities to be sure every invention was identified throughout the company.
An invention evaluation committee was formed and defined 11 invention evaluation factors to consider when evaluating new inventions.These evaluation factors were based on the company’s goals, growth plans, exit strategy, and other criteria. The invention evaluation committee met regularly to evaluate new inventions using the company’s evaluation factors.
Over time, the company continued to expand their products and create new inventions. The new inventions were identified and evaluated to select the most valuable inventions for patent protection.
By the time the company was approaching an IPO (Initial Public Offering), their patent portfolio had grown to over 40 patent assets. The IPO was successful with a valuation greater than $2B.
Now that you know the importance of a patent strategist to your tech company, how do you find the right person to help your team identify the most valuable inventions that create a strong patent portfolio? Here’s what to look for:
Does your business want to ensure that every invention is identified and evaluated so you build a patent portfolio of high value assets that align with your company goals?
If yes, I would be happy to talk with you.
Let’s schedule a call at: https://calendly.com/steve-sponseller/20