“No Trespassing” Signs for Creations of the Mind: Why Patents are Your Most Important Assets

Defensive Publishing, Intellectual Property Strategy

By: Katherine (Katie) McGuire, Esq., Registered Patent Attorney; Partner, Woods Oviatt Gilman LLP; Chair, Intellectual Property Practice Group

In the past few decades, the Information Age has evolved to the point that Wall Street puts a laser-like focus on intangible assets when evaluating technology-based companies. To remain competitive, you have to protect your intangible assets—specifically, your intellectual capital.

One way to do that is by differentiating your innovations from the competition and securing rights to your intellectual property, particularly inventions, with patents. Hence, patents are among the most important intangible assets for companies today: They keep the competition at bay.

Think of them as “No Trespassing” signs for creations of the mind!

What follows is a high-level overview of best practices and where patents fit into your operations.

Stack the Patent Deck in Your Favor: Stack Your Claims

While patents are critical assets of your business, they are not bulletproof. Once a patent is issued, it’s subject to attack and one or more claims can be invalidated at any time during the term of the patent. To protect against this risk, include as many claims in your patents as possible so if one is attacked and invalidated, hopefully others will remain intact.

That’s because, to prove infringement, the competitive device or process must include every element of any single claim within your patent.

You can stack your patent with claims that define your invention in different ways—and lots of ways. Include multiple independent claims, which stand alone, and dependent claims, which gradually add more limitations to the prior claims the dependent claim refers to.

Your Patents are only as Good as your Patent Strategy: Make Sure R&D and Marketing are Talking

Before there was the concept of “patent strategy,” typical corporate silos meant R&D and marketing were often not on the same page. In worst-case scenarios, R&D spent resources developing products that marketing could not market effectively.

Even when the two departments are in sync about product development and marketing strategy, it’s still a best practice to bring your R&D and marketing teams into the patent strategy development process to collaboratively decide:

  • Whether to patent, publish or keep the intellectual property a trade secret
  • What to patent: The main invention, alternate/defensive embodiments or peripheral technologies
  • When to patent: It’s strategic to file before public disclosure and confidential disclosures
  • Where and how to patent: Consider your and your competitor’s country-specific marketing

It’s a Never-ending Story: Competitive Intelligence Always Has a Role

While marketing and R&D are on the same page, your patent team should continue to focus on competitive intelligence by:

  • Performing regular patent and technical literature searches to keep up with what your competitors are doing
  • Using several search engines, methods and approaches to identify unexpected, less obvious prior art and marketing opportunities
  • Examining the obstacles and opportunities that arise from semantic search methods and using them to inform your marketing strategy

This may require resources, but keep in mind: For leading corporations, intellectual capital is the foundation of market dominance and continuing profitability, and often the key factor considered in mergers and acquisitions.