Quantity is not Quality

Have you heard the expression “Quantity is not Quality”?? Well, this expression has a special meaning to me as a patent attorney.

Evaluating our Patent Portfolio

When I evaluate a long-term potential of a patent portfolio I work on, considering a number of patents alone is far from enough. Instead, I have to consider what are called portfolio’s offensive and defensive capabilities. Offensive capability refers to whether the portfolio could support bringing an action against a potential infringer. Defensive capability bears on the ability of the patent portfolio to protect our company’s products, as well as, to counter any potential actions that the others can bring. Put another way, a good patent portfolio serves many purposes and is well-rounded to the assets of the company and its main competitors.?

Competitive Benchmarking

Speaking of competitors, as a company, it is also important to regularly execute competitive benchmarking against the competitors in our industry. Benchmarking is aimed to compare the existing portfolio of the company against that of the competition. This process can be useful in shedding light on the particular technology areas that the competitors are choosing to invest in and which areas they may be leaving wide open. Portfolios are put side-by-side to determine where we differ from the competition, how we can differentiate ourselves from them and how we can highlight our assets. It’s also a good idea, during benchmarking, to compare the value of Nokia’s portfolio to that of our competition. Portfolio valuation is a complex process, but worth the financial investment and time, because it gives a potential return on the R&D investment that the company made over the years. So, what do I mean when I say that competitive benchmarking should be done “regularly”? In this case, regularly means bi-annually or every 3-5 years at the most. Benchmarking can take on different forms, include different scope of the portfolio, and can be used to assess the portfolio at various levels of detail.?

Judicial Trimming

Every good patent portfolio management strategy will include a policy for judicial trimming. What does that mean? The Patent Offices, including the U.S. Patent & Trademark Office, collect maintenance fees throughout the life of a patent and those fees get progressively larger the older the patent gets. These maintenance fees incentivize the patent holder to consider whether continuing to exclude others from practicing the invention is finally worth it. Very often, if not always, the patent life cycle includes stages during which the patent is at its most valuable, such as when the patent first issues, and stages at which it is less so, such as when it approaches the end of its effective term. Besides the age of the patent, other aspects, like product implementation, can also play a pivotal role in whether the patent family is worth keeping alive. A sizable patent portfolio is very expensive to maintain, so as a patent portfolio manager, one of my important responsibilities is to make sure that we only keep the assets that serve us and serve the company as a whole to help us achieve our goal.?

Do you use “Quantity is not Quality” in your profession? Let's talk in the comments.