Integrating R&D and Patent Strategies

Integrating R&D and Patent Strategies

by Ryan P. O'Connor

Enormous economic value can be created by properly connecting business, technical, and legal strategies for research and development (R&D) and the creation of intellectual property (IP).

Intellectual property is created—it does not just happen. The vision of engineers with light bulbs suddenly lighting up is not reality. Good IP is the result of directed, explicit efforts to achieve strategic business goals through research and development. However, the value of the IP generated is not a direct function of the quality of the R&D. Instead, it is the nature of the integration among business goals, technical drivers, and legal considerations that will ultimately determine how much the IP is worth. Business relevance in a competitive environment, not the genius of engineering, is what drives the pathway to financial rewards from your intellectual property.

We maintain that R&D should be closely, and constantly, integrated with the creation and protection of IP. The opposite scenario, which is far less effective, consists of a chronological flow from business strategy to R&D to IP tactics. IP becomes an afterthought (“what did we do”) rather than a guide (“what should we do”). The concept of patent engineering is important.

Some practice tips for improving your patenting process:

How to Implement the Concept of Patent Engineering

• Make sure that patent strategies tightly (and constantly) integrate R&D, IP, and business functions within projects and across your business.

• Establish a process to execute #1.

• Create at least one patent engineer position to be accountable for this process. A key responsibility of the patent engineer is to understand the business strategy and competitive landscape, and then define broad claims that would avoid the prior art.

• Ensure good communication. A good feedback mechanism to quickly adjust R&D efforts will help you be more successful building your IP portfolio.

• Pursue the right patents. Don’t waste time filing low-value patents, and make sure to apply for patents that will bring the largest economic return to your organization.

Practical Tips for Patenting Your Inventions

• A patent has value not when you want to use it, but when someone else does.

• Inventions perceived as technically weak can nevertheless make strong patents. Many scientists and engineers believe the threshold for patentability is much higher than it actually is.

• The invention disclosure and review process is critical. Remember to focus on all inventions, not just those that appear to be patentable—trade secrets are very important too.

• Keep the business opportunities in mind. All decisions to pursue patent protection must be driven by estimated business value.

• Unless something is written down… it does not exist! Proper procedures must be in place to document innovation and ensure the earliest priority date possible for your inventions.