22 Jul 2020
In the chaos of the global Coronavirus pandemic — where budget cuts, layoffs, and other disruptions are threatening organizations at their core — leaders in some tech sectors are facing extraordinary challenges. As they grapple with critical matters of health and safety and maintaining essential operations, tech leaders must also find ways to keep innovation moving forward.
Although responding to recent disruptions might be more urgent, it’s important not to let your organization’s patent portfolio slip completely off the radar. And in fact, by shifting expectations, adopting a long-term view, and making the patent process work in their favor, some leaders are not only staying on top of their existing patent assets, but even exploiting opportunities brought about by this new reality.
Whether you choose to fast-track your patent applications, to slow down the process, or even to change your business model and pursue new innovations, the path to success will include some combination of assessing your situation, developing priorities, and forming a new plan.
As we work with clients to manage their patent portfolios during the pandemic, we’ve seen several patterns emerge — and we’ve helped them develop healthy patent strategies as they move their businesses forward.
Slowing Down to Conserve Budget
In the wake of massive budget cuts, some leaders may have to temporarily dial back their patent activity. Although patents remain important, it might make more sense for these companies to slow things down and focus resources on other essential activities. While tapping the brakes may be unavoidable, it’s still important to establish priorities and continue cultivating patent assets that can serve the business in the long term. In other words, be smart about it.
There are a couple of ways to slow down your spend and preserve long term value without killing your patent portfolio. First, continue filing new patent applications for your most important inventions. This doesn’t necessarily mean that your less important inventions won’t be protected at all. You might, for instance, be able to protect them as trade secrets or through future patent filings.
To defer costs on new filings, consider starting with a provisional application. Also, consider limiting new filings to the US only, to avoid the additional expense of international and foreign filings.
The second way to slow down your patent spend is to defer prosecution costs. In a previous post, we shared six options for slowing down patent prosecution with the USPTO. For example, by using extensions of time, RCEs, and other procedural tools, you can temporarily avoid the associated fees and still keep things moving.
For their part, the US and European patent offices have offered relief for patent applicants who are struggling to meet deadlines. The European Patent Office, for example, was offering extensions on applications disrupted by Covid-19 — although applicants must submit ample evidence to support their request. Similarly, the USPTO offers extensions under the CARES act provided the applicant was affected by Covid-19. The caveat: only small and micro entities are eligible. In short, the recently-announced patent office relief programs can provide remedial help in some limited circumstances, but they’re not as attractive as they might initially seem and should not be used as a forward-looking strategy.
Speeding Up to Capitalize on Innovation
For companies developing new technologies in response to emerging challenges created by the global pandemic, rapidly filing new patent applications is more important than ever.
The world is changing quickly as a result of Covid-19, and everyone will be affected in some way. That means we can expect to encounter not only new problems, but also the same new problems as our neighbors around the globe. Many of the solutions to these problems will be patentable — and the entities who file their patent applications first will own the most valuable rights.
Tech leaders can seize these opportunities by leveraging the patent process — and to get the most value out of the process, they will want to obtain patent protection as quickly as possible. There are two basic ways to speed things up:
- Accelerate the drafting process to get early filing dates. For example, you can often use provisional filings to get an application filed faster.
- Expedite prosecution of pending applications. In a previous post, we shared seven options for speeding up patent prosecution with the USPTO. For example, the USPTO’s Track 1 program and various pilot programs can get the process moving quickly.
In addition, the USPTO has created a fast-track process for inventions related to Covid-19. Although this particular program has limitations, it could be highly valuable for startups who are developing new health care technologies related to Covid-19.
Promoting Innovation when Operations Stall
What happens in a university environment when researchers can’t access their labs? What can engineers do when their projects have been put on hold? In companies and institutions where certain operations have been delayed or suspended, employees may suddenly find themselves with more free time to think about big ideas or solve bigger problems. Rather than becoming an aimless, idle limbo, the “new normal” could, in fact, inspire all kinds of innovations — and could even produce some “prophetic” patent applications.
Leaders can encourage and facilitate fresh ideas by promoting invention disclosure initiatives and creating environments for unconventional thinking. Tech companies can incentivize new invention disclosure records by offering recognition, monetary awards, or other types of compensation. By rewarding the best invention disclosure(s) submitted in a given time period, for example, companies can foster innovation even while managing expenses. To stimulate fresh innovation, encourage brainstorming sessions among team members that wouldn’t ordinarily interact in their usual day-to-day work, and present new challenges for team members to solve.
Launching Patents to Protect a Pivot
According to a recent article, as many as eight in ten business executives surveyed expected to change their business models or operations in response to the Covid-19 outbreak. Some are pivoting to directly address Covid-19, while others are developing products to address the new demands in a remote working economy.
As companies find themselves going back to square one with new products, their latest developments are not simply improvements to existing technology, but fundamentally new products that will likely form the basis of foundational new patents.
To the extent that your company is taking a new direction, it may be necessary to launch a new patent filing initiative to align with the new model. In this scenario, the patent strategy might look a lot like that of a new company launching a new portfolio.
If your organization filed patent applications before the decision to pivot, then those patent applications might be less valuable to the company now. In that case, there are some important questions to ask:
- Can we (or should we) sell or license out our existing portfolio to generate revenue?
- Should we abandon our existing portfolio and eliminate the expense of patents that are no longer of value in our new model?
Of course, even when a company pivots, their existing patent portfolio might still provide some degree of protection for the company’s new direction. For example, when your company changes directions, you should consider mining your existing patent filings to see if certain claims might cover your new products, or whether previously unclaimed subject matter can be protected through continuation filings.
Moving Forward and Maximizing Value
Filing a patent application is a 20-year+ investment in the foundation of your business. That means it’s more important than ever to avoid getting behind. Some innovations can wait, but still others may require you to move quickly. Either way, once an organization and its people are safe and operating with some sense of stability, tech executives should take stock of their most valuable assets — often their patent portfolios — and look for opportunities to move forward.
Henry Patent Law Firm is here to help you determine the best strategy to support your business. We will gladly review your patent portfolio and offer guidance to help you harness its potential.
Michael K. Henry, Ph.D.
Michael K. Henry, Ph.D., is a principal and the firm’s founding member. He specializes in creating comprehensive, growth-oriented IP strategies for early-stage tech companies.