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A holistic IP strategy can give you a competitive edge, protect your business from an infringement lawsuit, drive new revenue opportunities and growth. Licensing, selling or using patents as collateral are well-known ways to maximise the value of your IP. In this blog post, let us, however, look at 5 lesser-known strategies that can have the same effect.
1. File where your competitors are filing even if you aren’t active yet in that country
Identify jurisdictions where patent holders, especially your competitors, have the most active and pending patents in your area of interest. Design your patent filing strategy based on the patenting trends of established players in your technology space. The objective is to protect the market ahead of a possible launch of your product. For example, Europe, Japan, Korea, China and the US are popular jurisdictions as they have the largest economies. Plan to file patents here so that your competitors won’t be able to launch a competing product that encompasses the invention in these geographies.
2. Try to get the broadest claim approved and/or keep many independent claims
A patent filing with narrow claims offers limited invention protection. A competitor may find it easier to circumvent such a patent by modifying a portion of such a claim. If you have broader claims, people are unlikely to find a loophole like that. Drafting broad claims is tricky as you must guarantee that they cover all aspects of the invention found in the detailed description without infringing on other inventions. But if drafted well, and approved in examination, they are worth the additional effort. Alternatively, it may be possible to get the same coverage using a set of independent claims instead of a broad claim.
3. File patents around your competitors’ core patents even if you are not commercially active in them yet
Track competitors’ patent filing trends to identify technologies that may have a commercial advantage in the near future. Keeping tabs on their activity is a cost-effective way to understand their business strategy. You can then draw on this information to invest in a technology that may be effective for direct competition in the future. Monitoring your competitors’ patenting activity can also reveal white spaces where they lack patent protection. You can tap these areas by being the first to file so as to gain competitive advantage. This strategy considers patent applications as investments that will mature in the future.
4. File a patent of addition or a continuation-in-part application
A patent of addition in India or CIP (in the US) is a patent application that includes additional claims for a pending or granted patent. Other than the US and India, this provision is available in countries like Australia, Greece, Germany, South Africa, New Zealand, Brazil, Israel and Spain. A CIP application has the same specification and priority date as the pending parent patent application. A patent of addition or CIP can be used when a patent examiner has rejected a few claims or when you want to claim alternative embodiments of the invention later. This strategy helps you get a more comprehensive protection around your core invention and makes the patent portfolio robust.
5. Extend the life of your core patents using alternate means such as PTE (Patent Term Extension)
In some industry verticals, a patent holder spends most of the patent term awaiting approval for a product from a regulatory authority (e.g. FDA). By applying for a PTE, which is available under the 1984 Drug Price Competition and Patent Restoration Act, you can compensate for the lost time. A primary benefit of PTE is the additional revenue obtained due to the exclusive market position during the extension. For example, if the patent term of a pharmaceutical company’s drug elapses, then generic versions of the same drug could enter the market. Therefore, it is in the pharmaceutical company’s interest to apply for a PTE to maintain their competitive edge.
