Patent filing best practices: Balancing cost, quality and speed to market

For a recent webinar, Novagraaf brought together experts in patent filing and portfolio management to share best practice on global patent strategies, including a comparison of the Patent Cooperation Treaty and European Patent systems. We summarise the key issues and guidance discussed.

It’s no surprise that the panellists in Novagraaf’s recent global patent filing and EP validations webinar reported that the uncertainty facing businesses, as a result both of the COVID-19 pandemic and the challenging political and economic situation, was impacting patent filing strategies and budgets. Among the trends they shared was an increase in IP abandonment, as a result of cuts to budgets, and a lack of optimism among corporate IP departments about future filing strategies.

As research and development (R&D) teams and inventors have been forced, like the rest of us, to work from their home offices and away from their laboratories and equipment, there has also been an inevitable impact on R&D output and innovation capture.

Nonetheless, IP owners are still aware of the future importance of protecting their valuable IP assets. The question is: How can they best to achieve that in light of reduced spending and resources/support? A good first step is to re-examine global filing strategies to ensure they are efficient, cost-effective and aligned with business goals.  

Strategy drives budget

Patent acquisition and maintenance represents a major part of a global companies overall IP budget, so are usually a big target for cuts during a crisis. The key here is to avoid knee-jerk reactions and to make the necessary reductions in a strategic and effective way.

For example, many patent owners will focus their cost saving efforts on future costs – such as drafting costs of translation fees – when, in reality, the biggest budget killers are annuities and maintenance fees. This is especially likely to be the case where the IP owner maintains a mature portfolio, especially if it contains IP rights that are renewed despite not being strategically aligned with business activities.

For specific advice on best practices for annuities, read our articles: 'Patent annuities management in a crisis' and 'Patent annuities: When and what to renew'.

Of course, that same principle should be applied to future filing and prosecution strategies. When times are good, it’s easy to put off strategic decisions about coverage or to decide it’s quicker and simpler to extend protection across all markets, event though you don’t know yet if those rights will ever be needed or used.

That luxury and ready cash flow has now gone. Instead, IP owners need to decide early in which jurisdictions they plan to file and maintain their patents, to what business end, and using which strategic approach.

Building a strategy: practical tips

Ultimately, it is the overall market potential of an innovation that should dictate the amount of money that is spent on protecting it, agreed the panellists of Novagraaf's recent global patent filing and EP validations webinar. Of course, that’s easier said than assessed but, as a general rule, the total monetary potential can be determined by considering the value of an innovation to the product or service with which it is associated.

That potential value can then be allocated across each relevant jurisdiction, including those countries in which the innovation is used or sold/applied, as well as where the product is manufactured, transported or potentially at risk as a result of competitor activity. That analysis should then be evaluated in light of the differences in patent protection in the evaluated countries, including any challenges a company may face obtaining or enforcing those rights.

The next point to consider is how a company actually uses its IP; for example, does it acquire IP in order to block competitors or take action against infringement, or does it protect incremental inventions as part of a licensing or other monetisation strategy?

In addition, it’s important not to overlook future market potential in the rush to cut costs by reducing the number of countries in which patents are filed and maintained. IP owners should also use any cost cutting or audit exercise as an opportunity to assess any gaps in their portfolio, as well as to potentially review competitor activity; for example, to assess if their competitors were active in any markets that they were yet to build a portfolio.

Only once the economic, geographical and strategic/risk picture has been established, can an IP owner design your filing and prosecution strategy accordingly, as well as identify the right systems to obtain the necessary coverage.

Listen to our webinar in full for further tips and advice, including comparison of the Patent Cooperation Treaty (PCT), direct national entry and the European Patent (EP) validation process.