It’s not uncommon for me as an IP Strategist with over 20 years of experience to be contacted to provide a second opinion on a company’s patent portfolio. This generally occurs when clients aren’t totally satisfied with previous patenting activities because their attorneys failed to follow through on promises that their efforts would create meaningful business results.
It’s typically easy for me to identify the mismatches between patents and value creation because I was an in-house IP lawyer for years after spending my early career at law firms. While in a law firm every patent had value to me because that was my business, in the corporate setting I learned quickly to focus on obtaining patents that mattered to the business. Emphasizing this perspective required me to ensure future patented revenue streams for my company—which was my only client–were well protected, as opposed to generating broad patents for many clients irrespective of the business goals of each of these clients, as I did in my law firm legal practice.
When the goal is to generate business value for the client first and foremost, a patent must be viewed largely as a business document, and not just a technical and legal document, as is the typical case. This means that it is important for the company’s business team to roll up their sleeves and spend enough time learning about the patent process so they can manage the development of a protection framework that is strategically aligned with business goals. This approach might require minimizing the participation of the company’s technical team on the front end of the patent process until a protection strategy aligned with the short and long-term business goals can be defined. The lawyer must also allow the business framework from which the patent will emerge to evolve before a legal protection strategy can be articulated.
Learn more about the solutions in my Why So Many Patents Fail to Generate Expected Business Value and How to Fix the Problem blog post.