Thursday, 4 August 2016

Creating a global patent strategy: some finer points

"Creating a Global Patent Strategy: Advice from Silicon Valley" is a question-and-answer post on IP Folio which brings the views of an experienced and well-informed unnamed client. The interview contains a number of interesting points and perspectives. We noted the following, in particular:
... When do you go global? When is the right time?

Going global needs to be part of your discussion with the executive team. It must reflect and support your global business strategy and implementation roadmap, both in terms of geos and timeline. [Not everyone understands the word "executive" in the same way. The decision to go global with any IP strategy should, we believe, be taken at Board level and given the fullest available top-down support] ...

Are you considering cost when making this decision?

Not exactly, but in my experience the basic cost to get a simple patent family filed across five countries is probably about $150,000 over the 20-year life of the patents. This is a general estimate based on a very efficient prosecution practice, and a lot of money, particularly for young companies [given that much of the cost of a patent is front-loaded to the earliest part of its life, and that the preponderant majority of granted patents don't see out their 20 years thanks to technological advances and other reasons, the costing should look carefully at cash flow and possible borrowing requirements rather than just at the bottom line]. ... 
Do you distinguish between offensive and defensive patents?
Absolutely. You can go global for defensive reasons. Let’s say that you need to secure manufacturing rights in a country. While you may not be selling in Taiwan, you may be contracting out manufacturing with someone there. If so, you better think about whether you have the protection needed to keep manufacturing in Taiwan. Where do you see your product or service revenue going in the future? This is an important evaluation of market evolution. Are there areas where you are likely to have IP wars in the future? [This sort of defensive strategy requires a fair bit of thinking outside the box: it may be worth patenting not just in the country where your manufacture is outsourced but also where current and potential future competitors do their manufacturing or outsourcing too]. ...
We leave readers with the concluding words of this piece, which make encouraging reading for the IP analytics sector:
"Everyone should understand that there is no infallibility in IP. Hindsight and looking backward will inevitably throw light on decisions that proved wrong. Although 100% success is 100% unlikely, extensive research and methodical planning will increase your odds".
While the ultimate shape of any patent or other IP strategy will depend on many factors other than the fruits of Big Data-crunching and patent analysis, any decision that is based on reliable information can be expected to deliver far better results than a decision that flies in the face of facts. And IP analytics can help with the more mundane side of things too, by assisting in the making of the right cost savings [on which see "Cutting unnecessary portfolio costs: an engineering company makes savings", here]. 

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