6 Tips to Select the Right Strategic Partner for Building an IP Portfolio Based on Invention Priority

The current global economic situation due to the COVID-19 pandemic is increasingly forcing companies to reduce their IP portfolio building costs. While this can be done by reducing their overall IP/patent filings, cutting down on such filings is not easy as companies consider all their inventions important. In our experience, however, all inventions should not be treated equally. Instead, a hierarchy of inventions should be established so that a company’s resource, money, and time can be allocated more intelligently in building a robust IP portfolio – either through in-house development or by taking help from a strategic partner.

If you are unsure about how to choose a strategic partner, read this article to discover the six effective tips for selecting the one best suited for your business.

How Leading Corporations Manage their IP Portfolios

Most of the leading companies around the globe follow two best practices for managing their IP portfolios, especially patent portfolios. The first best practice is to identify and categorize each invention into high, low, low to mid, and mid to high priority. The second one is to select a patent filing and prosecution strategy for each invention based on its priority.

In case you are wondering how you can know the priority level of an invention, here is your answer. You can create an invention priority matrix using two parameters – degree of novelty and business impact of an invention to segregate them into high, low, low to mid, and mid to high priority inventions. High priority inventions are the ones that have a high business impact and broad novelty.

While low priority inventions are those that have a low business impact and a low degree of novelty. Besides high and low priority, inventions can also be categorized into low to mid priority and mid to high priority inventions. Low to mid priority inventions are the ones that have a low business impact but a high degree of novelty. Whereas mid to high priority inventions are those inventions that have a high business impact but not a high degree of novelty. After categorizing all inventions into high, low, low to mid, and mid to high priority inventions, you can determine the appropriate patent filing and prosecution strategy.

Resources for Implementing Invention Priority-Based Strategy

Usually, companies with implement invention priority-based strategy, use three types of entities for managing the overall patent process. The first one is the company itself. It is the in-house patent attorneys who manage their entire patent preparation and prosecution process. The next is the US law firm with whom the in-house patent attorneys work for handling patent preparation and prosecution. The third and most important one is a strategic partner. A strategic partner has patent engineers who are technically sound and are experienced in preparing and prosecuting patent applications. They assist the in-house or the US law firms attorneys to finalise the patent application to cut overall effort and costs.

Top Tips to Choose the Right Strategic Partner

  • Ability to Collaborate with In-House Teams or Law Firms – Select a strategic partner is to evaluate their experience. Companies must check whether the prospective strategic partner has prior experience of managing the entire workflow. It refers to their ability to coordinate with the in-house patent attorneys or patents attorneys of the US law firms.
  • Awareness about Patent Practices – The strategic partner must employ people who are aware of the patent practices of different jurisdictions.
  • Seasoned Patent Drafters – While choosing a strategic partner, it is important to check if they have experienced patent drafters. Notably, the drafters must have extensive experience in drafting US patent applications.
  • Technical Expertise – An ideal strategic partner should have a workforce that is highly skilled and technically sound. This means that the partner should have employees who have sound knowledge of the industry or products of the industry .
  • Adept in Preparing Patent Drawings – A good strategic partner should have patent illustrators who are adept in preparing patent drawings. This is because, the patent drawings can make up for the errors during patent prosecution.
  • Ability to Scale Up – The most important tip to select right partner is to check their ability to scale up. This means that a company should check whether the prospective partner can scale up this business model* quickly.

*Business model of using a strategic partner for preparing patent applications.

Conclusion

Although building and maintaining an IP portfolio is considered a difficult and time-consuming task, it does not have to be. Using the right strategies and by choosing the right strategic partner, creating a robust IP portfolio can be a breeze. This is because the right partner not only understands a company’s business objectives but also supports them. If you are looking for a strategic partner for your business, reach out to companies such as ours.

Sagacious IP’s Intellectual Property Management Solutions includes various capabilities such as patent docketing, information disclosure statement (IDS) preparation. Also, patent proofreading, office action (OA) shell response, patent term adjustment, patent filing form preparation, EP validation and data verification. Click here to know more about this service and click here for the webinar on the subject.

-Anant Kataria (CEO), Pankaj Garg (Engineering Drafting) and the Editorial Team

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