Monday, 14 October 2013

Top 10 Tips on Building a Patent Portfolio

1.  Cost is a very important consideration when building a patent portfolio. In the patenting process costs spiral up, and therefore when new cases are filed, there must be an expectation that the financial resources will be available to maintain the portfolio for the foreseeable future.  Perhaps each time a case is filed the question should be asked ‘Do we expect to be able to fund national phasing of this case at 30 months?’


2.  Earlier patent cases are citable against later ones.  Therefore each case needs to be drafted in a way that minimises its prior art effect on later cases. That means future research and patent applications will need to be a component of the decision-making when deciding on the contents of a patent application.

3.  A patent application is published at 18 months from filing.  It is then fully citable against later cases.  A review of the research should be conducted prior to the publication of any application to ascertain whether it is worth filing a new case before a previous case is published.  Clearly such a review should be carried out before any type of public disclosure of research is done.

4.  Ideally predictions should be made of the following into the foreseeable future:

- cost of maintaining the patent portfolio

- financial resources available for the patent portfolio

- significant research findings

These can then be used to guide the building of the portfolio, in particular how quickly it should grow.

5.  Careful thought needs to be given to whether similar inventions are filed in the same patent case or not.  Having a larger number of cases in the portfolio will give more potential for maximising the income from licencing or selling cases.

6.  Filing similar inventions in separate cases gives procedural flexibility in the patenting process.  For example if 2 cases are filed, then at 12 months one could be refiled and the other could be taken into the International phase.  This flexibility would clearly not have been possible if both inventions were in the same patent case.  However filing two cases would essentially double the patenting costs.

7.  Filing separate cases for similar inventions can be helpful in licencing them to different parties.

8.  Filing similar inventions in separate cases can also be helpful during examination where different sets of arguments and amendments could be used in overcoming objections.

9.  Having multiple patent cases allows one to have more than layer of patent protection for important inventions.

10.  Having a patent portfolio assists in giving a strong defensive position in the case where litigation is likely. In addition a portfolio of cases can be used as bargaining chips in negotiations, e.g. in a cross-licensing situation.

You may also wish to see related articles Biotech due diligence advice and What do you need to know about commercial biotech

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