Are you protecting your R&D investment?

As an intellectual property law firm, and particularly a patent law firm, we often meet clients only after a decision has been made to patent an invention. By then, it may be too late for our advice to have its full commercial impact. We do not see the whole picture or the strategy behind the decision, and we may miss opportunities to offer advice that would be valuable to the client.

What do we mean with that? Many voices in our industry and even in politics are talking about becoming better at commercialisation of patents and solutions and about using patents and patent application to be used as a strategic businesses tool. These statements are rather easy to make, but transferring them into real services and practical measures is not. The thing is, if we as patent attorneys are not involved at an early stage it can be difficult to provide the right advice, especially if we should (and I believe we should) understand our client’s businesses and ask the right questions.

Those questions might include:

• Which companies are developing competing technologies?
• Where are the strongest patent barriers?
• Which technical directions are less crowded?
• Who might become a licensee, investor or acquisition partner?

How can patent intelligence guide R&D planning?

There are several areas in which a patent specialist can add value. One is early-stage R&D planning. Researching a specific technology area related to an R&D project prior to investing a large sum into the same R&D project can be very useful and this can be done efficiently in a workshop. In the age of AI an R&D plan allows us to extract and distil information in order to perform a technology area analysis. Often the problem that the R&D project should solve is a good starting point to conduct initial analysis and searches. A technology analysis can be done in a workshop together with the R&D team and often leads to relevant results, where potential roadblocks in the form of valid patens are discovered at an early stage, so that the resources for the R&D project can be optimized and redistributed if necessary.

Are you making use of existing knowledge when you are running into technical challenges?

Another aspect is the collaboration with a patent specialist, who is available for R&D teams or developers when they run into technical roadblocks. For example, parts do not work in the field, the same thing/part always breaks, a method step may face a high risk of a wrong output, a replacement part that always goes bust in certain conditions and so on, a smart search can reveal existing solutions that can help solve the issue. Rather than working on and around the issue for several weeks, a first step could be to use the information, describe the issue and check if anybody else encountered the same problem in the patent literature. This can be done in a project, a workshop or on a retainer basis, where the R&D knows whom to contact in case such a challenge arrives. Using the right tools and approach can save a significant amount of time.

What business value can IP-driven R&D Intelligence crate?

Both the examples are forms of IP-driven R&D intelligence. They bring patent literature and knowledge closer to the business and build awareness in R&D teams. If a company or research institute understands early on what has been patented, by whom and where potential obstacles lie, then the potential for higher value patent protection down the road is much higher. This is directly tied to business value for a company or an institute.

The same can be said for the above example with the technical challenge. If a solution is found during a patent search, which typically takes a few hours with modern tools and a professional judgement call of an experienced patent attorney, then several weeks of R&D time can be saved. On the other hand, if no solution is found, then that shows that there is potential value in investing R&D resources into finding a solution and down the road also patenting it, since it relates to a technical challenge that now hopefully has been solved and was relevant to the market/product, which in itself is tied to financial incentives.

What else can be done early in product development?

To create further business value, the above two examples can be combined with white space searches. White space searches indicate what potential future patent families could protect.

Finally, commercialisation is not synonymous with licensing. Some of the most valuable strategic patent advice helps clients to:

• Preserve resources,
• Deter imitation,
• Preserve freedom to operate,
• Maintain bargaining power,
• Act early,
• Decide when not to file for patent protection, and
• Secure financing or build a valuable competitive position.

These are practical ways to create business value and enhance collaboration between R&D teams and patent specialists. This is an area we are actively developing and working with at Groth & Co. If you would like to learn more about our approach or how we organise our workshops, please get in touch.

Christian Hafner
Managing Partner
Head of Patent Department
European Patent Attorney