Community Forum – Patent Portfolio and Research Strategy
Are you concerned that your patent portfolio reveals your research strategy?
Michelin is evaluating its patent filing criteria, especially the balance between the protection of innovation with patents and with trade secrets. As the patent portfolio expands, this question is often asked, “Does the patent portfolio reveal our research strategy to those who may monitor our patent publications?” Is this a factor that concerns you? If yes, then does that influence your patent filling strategy? Do you monitor and map your competitors’ patent publications? – E. Martin Remick, General Patent Counsel, Michelin North America, Inc.
1. We employ a twin strategy based on trade secrets and patent protection. Trade secret strategy works only if one is certain that the trade secrets can’t be replicated by someone else over a period of the product life cycle or more than two decades. In some cases, certain ingredients could be kept as trade secrets forever – a century or longer. Therefore, an analysis has to be done at the scientific level whether someone could replicate the idea within the patent protection time or not. Processing technologies and processing steps, minor ingredients, ingredients that can’t be traced or analyzed are good examples for trade secret. Pace of innovation is also important in this determination.
2. Absence of being able to protect as trade secrets, obtaing patent protection is the next best strategy despite the fact that competition may find the strategy. A large R&D organization works on so many projects and files so many patents, it is not easy for a typical competitor to have competitive product advantage unless the patents being filed aren’t intended for practicing them as part of the products. Of course, patent protection strategy is different if there is no innovation in the market place.
– IP Manager, Large consumer products company
Q: Are you concerned that your patent portfolio reveals your research strategy?
A: No. The combination of 18 months until publication, plus the fact that our portfolio contains both active and non-active research(*) means we have sufficient time and options (from an external perspective) before competitors might figure out our strategy.
(*) IP related to non-active research is kept active until a major IP expense hurdle needs to be justified.
Q: Does the patent portfolio reveal our research strategy to those who may monitor our patent publications?
A: No, same as above.
Q: Is this a factor that concerns you?
First, a “Yes – No” to file has to do with how detectable the novelty is in the research. The easier for us to detect a copy lends more to filing a patent – the more difficult for us to detect a copy lends more to keeping as a Trade Secret.
Secondly, if a filing is justified, then we discuss the timing of the research versus the commercial opportunity (in view of the 18 month publication); this discussion helps to decide “when” to file.
Q: Do you monitor and map your competitors’ patent publications?
– IP engineer, medium manufacturing company
We definitely follow our competitors’ patent filings in strategic areas and assume that they do likewise. Following patent filings are one part of the competitive intelligence process. Other elements include public announcements, business intelligence, customer feedback etc.
While patent filings give some insight into competitors’ strategy, you do not know which patents they are practicing nor do you know, from a single patent, what the areas of continued activity vs. ‘dead-ends’ are. By the time you figure that out it may be too late unless you have your own technology strategy that you are pursuing!
– Director, large chemical company
Our organization’s patenting policy is kept in strong accordance with our business strategy. So, recently I analyzed our filed patents from a helicopter view and discussed the results within our R&D and Innovations department: Fortunately, our filed patents reveal not our research strategy but give the very picture of our company, what we like/want any third party to gain.
On the other hand, any patent data base can be seen as a knowledge pool leading you to potential partners for some fruitful business collaboration or alliance. This needs to be in your mind (periodically re-)evaluating your patent filing strategy.
Monitoring any competitor’s patent publications is mandatory: Listed inventors on a patent document need not to be the first from a global point of view but of the examinator’s – I am sure you are aware of that fact.
– Scientist, medium manufacturing company