Patent portfolio management strategy is an important factor in managing a firm’s intellectual property (IP) assets. Successful portfolio management strategies can help prolong the life of a patent family and attract potential buyers or licensors.
Because patent portfolio maintenance can become unwieldy and expensive as a firm grows, it is important to review one’s portfolio frequently to realign it with the firm’s goals.
In this case study, we discuss our patent portfolio strategy and analysis services and how it could potentially assist in streamlining and marketing a portfolio.
We were approached by a technology development and commercialization center for a government institution to assess the institution’s patent portfolio.
The institution’s patent portfolio comprised 80 patents with issue dates from the past 6 years. The overall portfolio was built from four different research groups and contained patents directed towards a wide range of high technologies and sciences, such as antennas, biomedical, polymers, lasers, optical systems, nanostructures, semiconductors, sensors, and surface coatings.
Our services were recruited to assess the patent portfolio and identify key targets for marketing and licensing. Specifically, we were asked to determine how the patent parameters impacted the marketability of the portfolio, how attractive the patent portfolio was from a commercial perspective, the key indicators for assessing newly filed patent applications for marketing, and best practices for patent evaluation in view of marketing and licensing moving forward.
Taxonomy of the Patent Portfolio
GHB Intellect is a full-service intellectual property consulting firm. Our strength lies within the quality and breadth of our team of experts who are especially selected to an individual project. These experts have first-hand industry experience and possess the knowledge and background perfectly suited to support the requirements of a project.
As a first step in this project, we created a taxonomy of the subject matters involved in this portfolio and quickly discovered that it encompassed a wide breadth of technological/scientific fields. As such, we hand-picked 14 subject matter experts from our team, all of whom were well-versed and well-experienced in the respective fields and industries of the subject matters.
In addition to subject matter experts who were assigned to review each patent for technical content and its potential applicability to various industries, three IP analysts were also assigned to the project to review each patent for potential legal and business risks.
To better suit client objectives in the most time-efficient and cost-effective manner, GHB Intellect can divide a project into a multi-step approach tailor-suited to the client’s goals. This held true for this project, as there were numerous patents spanning multiple technologies and industries. In consultation with the client, this patent portfolio evaluation project was performed in two phases. The two-phase approach allowed us to save time spent on low-potential patents in favor of allocating more time on high-potential ones. This, in turn, translated to cost savings to the client.
Creation of a Patent Scoring/Ranking System
To meet the client’s specific needs, we created a custom scoring system for assessing the client’s patent portfolio. In conjunction with the client, the scoring system was established to provide a general rank of each patent based on a plurality of factors, including patent landscape, patent prosecution history, sufficiency of the specification and claims, number of claims, claim language and limitations, comparison of first to last claim set, broadness of the patent family, whether the patent family is open, likelihood of workarounds, ease of detection, applicability of the patent to various markets, ease of marketing, potential market size, and potential current use in the market, among others.
Phase 1: Rapid Assessment of Patent Quality
Phase 1 involved performing a quality assessment of each individual patent across the patent portfolio, including a rapid review of the 80 patents in the client’s portfolio. After rating each patent on several important attributes, it was assigned a rank of Low, Medium Low, Medium, Medium High, or High, which represented the overall attractiveness of each patent in an open market. The ranks were given based on input by the subject matter experts and the IP analysts who reviewed and rated each patent, and who worked closely together to ensure accurate and consistent ranking across all parameters.
A spreadsheet report of Phase 1 was provided to the client, and 20 of the highest rated patents were selected for Phase 2 review.
Phase 2: Detailed Analysis of Patent Potential
Phase 2 of our analysis involved a detailed analysis of the 20 selected patents from technical, business, and legal perspectives. Notably, we identified potential field(s) of use, potential market size, the significance of the patent, potential risk factors, and provided specific recommendations as to the direction to take each patent in terms of research and marketing. Each patent was reassigned a composite score by IP analysts based upon an analysis of the potential market value, the significance and the risk factors identified for each patent, as well as the overall patent quality.
Our findings were updated in the spreadsheet from Phase 1. In addition, we created easy-to-read one-page summaries for each of the 20 patents, highlighting their key indicators. We also provided an executive summary of the project that not only documented the approach taken and the results obtained, it also provided strategic advice on the management/development of the portfolio going forward.
Sample One-Page Summary
Ultimately, our analysis assisted the client in identifying the most attractive patents within their portfolio for commercialization, the key indicators for that attractiveness, and best practices in evaluating patent and patent applications moving forward.
Managing a Patent Portfolio
Patent evaluation, particularly for large portfolios covering vast spaces in science and technology, require a multi-disciplined team and seasoned IP analysts to identify a patent’s significance, applicability, market, and risk factors. GHB Intellect has over 500 experts in high-tech, science, finance, and IP. By organizing the best and most appropriate team of experts (including technical, financial, legal, and business) for every project, and by utilizing best practices in IP evaluation, GHB Intellect is able to provide accurate and reliable patent portfolio management strategy and marketing suggestions.
As a global Intellectual Property Consulting Firm, GHB Intellect offers a wide array of high-end services to support its clients in their IP matters. We specialize in portfolio valuations, M&A advisory, patent litigation support, engineering, as well as IP development, management, and monetization. Contact GHB Intellect today to get the reliable intellectual property consulting you can bank on.
Subject Matter Experts in This Case: