Home > Topics > Patents and Patenting: Balancing Protection with the Public Domain > Patenting Strategies: Building an IP Fortress > Editor's Summary, Implications and Best Practices

This chapter explains how both private and public sector entities can create comprehensive IP portfolios of substantial value. For both sectors, patents are a key element for producing that value, but an IP portfolio can also take advantage of other forms of protection: trademarks, copyrights, or trade secrets. To give a fuller sense of these options, the chapter provides a helpful set of IP-related terms, and details the variety of patents available with their respective limitations and strengths. Each form of IP protection has its trade-offs. Patents offer firm protection but high costs. Other options offer less protection but also lower expenses. The geographic scope of protection for each option also varies and should be carefully evaluated when considering alternatives. For both private and public sector entities, a combination of these options will be most effective.

As part of its examination of how best to protect and increase the value of intellectual property, the chapter also discusses the difference between offensive and defensive patenting strategies. An offensive patent strategy is designed to build barriers to block competitors from gaining entry to your proprietary technologies. Using a defensive patent strategy, a company files patents primarily to ensure that innovations can be practically used. To build an “IP Fortress” of protection, several forms of intellectual property may be used for the same invention or improvement, and both offensive and defensive strategies may be used.

In order to know what strategy to pursue, an organization should know what it has. The first step, therefore, in developing an IP strategy is to document what technologies already exist in the organization and what technologies are in development. This is usually accomplished through a freedom to operate study or IP audit. Armed with this knowledge, it will then be possible to intelligently choose the best ways to protect your intellectual property and enhance its value.

The public and private sectors, by and large, have different missions, objectives and motivations. These, in turn, drive their respective overall patent strategies. Private sector organizations, primarily corporations, are profit-oriented and should aggressively respond to the pressures imposed by the marketplace and also shareholders who expect returns on their investments. Therefore, the private sector will use defensive and offensive patenting strategies, often obtaining numerous patents containing narrowly drafted claims. In this way, a series of painstakingly prosecuted patent portfolios are strategically used to build proprietary fortifications. The private sector organization can thereby stake out its territory, protect its interests, and secure its profits. In the expanding world marketplace, this strategy has only become more telling, with the increasing reliance on foreign filing and patent families confirming the predominant global strategic perspective of multinational companies.

The public sector, on the other hand, has a very different mission, that is to serve the greater public good. Also, for much of the public sector, the perspective is primarily local, either national or possibly global. Patenting strategy will focus on more broadly drafted claims, which will encompass a technology, or (as is often more importantly the case) a key process, method or technique, for example a technique of genetic transformation. These types of patents, when appropriately strategically licensed, will enable effective development, broad dissemination and maximum societal impact of a technological advance, precisely in line with the public sector mission of providing for the greater humanitarian interests and welfare of the general public, in contrast to the much more limited constituency of the private sector.

A comprehensive IP portfolio can be of substantial value to either a private sector entity, for example a company, or a public sector entity, for example a national research institute. For both sectors, patents are a key element of IP portfolios. Large companies can afford an offensive patent strategy, but small companies may not have recourses for this. Therefore, especially for small and middle-sized companies, and for public sector organizations, planning and lateral thinking on how to put in place an effective and cost efficient strategy is extremely important.

Intellectual property can be protected through patents, trademarks, copyrights and trade secrets. The costs of maintaining each of these IP categories are different. A private sector company, or public sector institution, can reduce costs also by focusing the patent protection to those geographic areas where there are either business (private sector) or humanitarian (public sector) opportunities. Strong IP protection may be built by using several forms of protection for the same invention of improvement, for example, a hybrid maize variety that is simultaneously protected by patents, trade secret, trademark and plant variety protection (tiered IP protection strategy).

Key Implications and Best Practices

Given that IP management is heavily context specific, these Key Implications and Best Practices are intended as starting points to be adapted to specific needs and circumstances.

For Government Policymakers

• Harmonizing national patent systems remains an important goal for improving the effectiveness of the global IP system.
• Both private sector companies and public sector research institutions can use the IP system to advance their respective missions and fulfill their respective duties to their constituencies. Indeed, commercial and humanitarian objectives and strategies are not in conflict, but rather are complimentary aspects of enlightened best practices in IP management.

For Senior Management (university president, R&D manager, etc)

• Understand all the options for IP protection: patents, copyrights, trademarks, trade secrets, etc.
• The first step in developing an IP strategy is to document the technologies that already exist in the organization, plus those technologies in development.
• Comparison of the relative benefits of offensive and defensive patenting strategies should be done in light of an institution’s mission.

For Scientists

• Be aware of the type of protection (patents, trademarks, copyrights, and trade secrets) that covers the intellectual property your program obtains, uses or creates.

For Technology Transfer Officers

• Be aware of the differences between types of IP protection, as well as the differences between different IP regimes, so that you can use them cost-effectively and powerfully.
• The first step in developing an IP strategy is to document the technologies that already exist in the organization, plus the technologies in development.
• Knowing the IP rights of other organizations in your field will help you identify where your organization has a distinct competitive advantage, and will enable you to identify and eliminate costs of any out-of-date intellectual property. It also provides you with a strategic road map to create a successful R&D strategy.
• Compare the benefits of offensive and defensive patenting strategies in light of your institution’s mission.
• Strong IP protection may be built by using several forms of protection for the same invention of improvement, for example, a hybrid maize variety that is simultaneously protected by patents, trade secret, trademark and plant variety protection (tiered IP protection strategy).