Patent Portfolio Strategic Management

UTEN Training Week #5:
Patent Portfolio Strategic Management
INPI, Lisbon - 22-26 November, 2010

The goal of this Training Week is to help TTOs on how to build and manage a strong portfolio that could provide potential licensees / research contractors with the essential “freedom to operate” regarding launching new products (see annex for more information on freedom to operate).

The management of an IP portfolio goes a lot further than deadline management and a payments control center. It requires resources and skills to efficiently handle IP strategies - the backbone of the financial sustainability of R&D institutes/centres.

There are three main approaches should be considered when developing your IP strategy:

• Primary IP Strategy is the protection of one’s proprietary technology through patent filings. This can be described as a defensive IP strategy, aimed to defend your hard-earned technological advantage.
• In order to fend off litigation attempts of competitors, the primary focus of patent protection is often focused on preserving ones freedom to operate. This approach has been identified as being an offensive IP strategy, as it includes strategic patenting in the competitor’s space, to enable attacking the competitor in order to buffer up your market or negotiation position.
• More recent IP strategies have focused, in addition to the above, on using IP as a profit or revenue center, by specifically creating licensable or saleable IP.