Achieving Diversification in Your Patent Portfolio (or Avoiding Tunnel Vision)

While it’s natural to find that many of your important inventions are clustered around a few key technology differentiators, you may be leaving value on the table if your patent portfolio is too narrowly focused.

Creating a well-rounded patent portfolio requires analysis and planning. That’s what’s discussed briefly in this post.

Narrow Focus is the Default

In general, the majority of a company’s patent applications originate from a relatively small number of its inventors. So, it is likely that the patent applications are clustered around what key creative people are working on, reading about, or otherwise have their focus on.

Is it really an issue?

A lack of diversity in the inventions which are being captured and protected leads to three problems in particular:

1) Diminishing incremental benefit (while incremental cost remains steady). If one area of your portfolio has ten patented inventions, do you need to patent an eleventh invention in that same area? How about a twentieth invention? A fiftieth? At some point enough really is enough.

2) Valuable inventions going unnoticed. This is a big one. The inventions that prove to be very valuable are not always the ones you’d expect. By way of (slightly controversial) example, I can imagine a world in which the iPhone’s slide to unlock feature was considered trivial and so nobody flagged it to the patent team… and that one turned out to be a big deal (https://www.theverge.com/2017/11/6/16614038/apple-samsung-slide-to-unlock-supreme-court-120-million ).

3) Leaving gaps in the IP landscape that your competitors can slip through (or fill). For example, imagine that your inventors identify two solutions to a problem, prefer one of the solutions for being more elegant, interesting, and/or challenging, and so they do not pursue the second solution... and it goes unprotected. This potentially leaves your competitors with a route to avoiding your patents.

Looking Backwards is the Default

Usual practice is to 'call in the patent lawyer' when something has been invented. Inside a tech company, 'calling in the patent lawyer' probably means completing and submitting an invention disclosure form (IDF).

This practice is backwards looking. It is protecting value that has already been created, it is not protecting future value. Not to say that protecting value that has already been created isn't important, but capturing future value is perhaps equally important.

There needs to be 'pull' from your patent team, based on the commercial direction of your business and the gaps in the patent landscape, as well as 'push' from your technical team.

Gap Analysis

A company’s patent review committee typically has inputs in the form of IDFs, which describe the company’s latest inventions, and outputs in the form of IP rights (for convenience, I’ll just talk about patent rights here). But simple lists of these inputs and outputs, on their own, only really support simple metrics like ‘X patents granted and a further Y patents pending’ and ‘Z% of IDFs become patent applications’. Metrics like these can be useful, but they don’t go far enough.

Good patent teams supplement these lists with information about the mapping of their patents to their products, and perhaps to the products of their competitors. This is important, but it is still bottom-up. That is, there's still only 'push' from the technical team, with no 'pull' from the patents team. It's reactive, not proactive.

To enable the 'pull', what is needed is a top-down, market-driven visualisation of your business's technology ecosystem. If you can fit it in one diagram, all the better, but you may need at least a couple of different diagrams. The diagram(s) should represent the key technology systems, sub-systems, and components. And ideally they will capture the different perspectives of the various participants in the ecosystem, e.g. manufacturers, sellers, end users, etc.

Now map your IDFs and the IP rights to the overview. For example, imagine adding a number in a bubble to each sub-category, where each number indicates the number of patented (or patent pending) inventions you have in that sub-category. What you’d produce is, in effect, a patent heatmap for your technology’s ecosystem… and now you can see the gaps!

And once you know where the gaps are, you know where you need to 'pull'.