May/June 2009 / Intellectual Property
Strategies For Building Patent Portfolios
The initial business objective for a patent portfolio is to protect the company’s core technology. The company must have a clear definition of that technology. Patents for methods and production for each product being commercialized should be procured. Products in the commercial development pipeline are the next level of priority.
In addition, consider out-licensing patents that cover compositions and methods for which the company itself has no immediate plans. Out-licensing allows the company to form strategic alliances with business partners, thereby fostering further collaboration and innovation. Finally, defensive patents should be pursued for a cross-licensing package to invoke if the company is challenged under a competitor’s patents.
The authors describe three approaches to building a patent portfolio, briefly discussing the risks and advantages of each.
A patent portfolio is a valuable asset. Ideally it attracts investors and potential acquirers. The claims of the portfolio should be broad enough to cover not just the core technology, but reasonable alternatives and modifications as well. The patent portfolio then creates a zone of protection around the core technology, inhibiting others from designing around it.
Nabeela Rasheed, Ph.D., is a shareholder at McAndrews, Held & Malloy. Her practice concentrates on the acquisition and enforcement of intellectual property rights. She advises clients in all areas of global intellectual property portfolio management. Contact him nrasheed@mcandrews-ip.com.
Robert W. Fieseler is a shareholder at McAndrews, Held & Malloy. He specializes in developing value-oriented patent portfolios for clients in diverse fields of technology. He serves as principal patent counsel for the Fermi National Accelerator Laboratory. Contact him at rfieseler@mcandrews-ip.com.
