Do the Evolution: Five Ways to Adapt Your Patent Strategy

Hodgson Russ LLP

The eastern coyote (or coywolf) is spreading across eastern North America. A study showed that coyote DNA dominates, but average eastern coyote DNA is about 10 percent dog (like Doberman Pinscher or German Shepherd) and 8-25 percent wolf. This interbreeding of coyotes, wolves, and dogs has resulted in an animal that is larger and faster than a coyote. It also has caused the resulting subspecies to overcome some weaknesses. For example, coyotes dislike hunting in forests, whereas an eastern coyote will hunt in open terrain (like a coyote) or wooded terrain (like a wolf). Wolves dislike humans and noise whereas an eastern coyote is more tolerant of people (like a dog). Eastern coyotes also have urbanized their diet and even have been observed looking both ways before crossing the street.

Adapting to changing situations isn’t just limited to animals. It’s something to consider for a patent strategy, too. Patent strategies shouldn’t be fixed. As you learn of deficiencies in your strategy or breaking news in your market, consider adapting your patent strategy. Cleantech and other technology changes rapidly. What made sense a year ago at an IP strategy meeting might be obsolete or wrong today.

  1. Don’t be afraid to amend claim language or to adjust your planned patent application filings to protect new changes to your product. The set of claims you planned or originally filed may cover a product or method that is outdated, received poor customer feedback, or later failed experimental testing. Consider revising claims that don’t cover your product, likely won’t be used by competitors, and won’t garner interest from a potential licensee.
  2. Don’t hesitate to put up roadblocks for a competitor or potential competitor based on new information. One benefit of a pending patent application is that it can cause anxiety at your competitor and may force them to change business strategy even before a patent issues. Connect new competitive intelligence to patent strategy. If you can think of a technique that a competitor will probably need in the future, then cover it with a patent application if it looks more valuable than other ideas that are being considered.
  3. Cull the herd if money is tight. Prioritize patent application filings, responses, or maintenance/annuity fee payments when budget issues arise. Patent protection can be incredibly valuable, but money allocated for IP should be balanced against R&D costs (or even the electric bill). If patent portfolio expenses must be reduced, consider dropping cases that are facing stiff rejections or are unlikely to be enforced. Money keeping a case alive if that case has doubtful validity or a questionable chance of being allowed might be better spent on something else.
  4. Review your portfolio and abandon patents or patent applications that are only collecting dust. Consider yearly reviews to evaluate whether patents (and even patent applications) still cover your products or your competitor’s products. Let older cases with higher maintenance or annuity fees go abandoned if the costs cannot be justified.
  5. Adjust your foreign filing strategy based on changes in the market, within your industry, or by your competitors. Patent portfolio costs increase at an amazing rate as you expand coverage into more countries. Don’t be afraid to drop coverage if sales in certain countries fail to meet expectations or competitors or customers move operations or exit the market. Money you save by cutting (or foregoing) foreign patent coverage can be put toward new patent applications or can be sunk back into R&D.

Change your patent strategy to reflect your business environment or recent events, or to overcome deficiencies. A flexible patent strategy can help your patent portfolio thrive in new environments or against competitors. Creatures both great and small can adapt and avoid extinction through evolution, and patent portfolios are no different. Don’t let your patent portfolio be left behind.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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