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Written by Alex Butler

Bilski - Patent Claims Analysis - Where to start

Patent claims analysis is now in focus issuance of the Bilski opinion by the U.S. Supreme Court.

Supreme Court

Looking back a few years, few business executives would think that "patent claims" would be an issue that they read about in the popular press. Thanks to business method patents, the Bilkski case and the ongoing software patent debate, this issue is now front and center as a question for corporate patent counsel.

Unfortunately, few know where to begin planning their reaction to questions about the impact (if any) of this decision and others certain to follow.

The traditional approach of reading each patent (and each patent's multiple independent claims) will generally not work. In other words, having spent millions of dollars in legal expenses and fee to build a portfolio of patents, and having a full roster of ongoing patent work, how will your legal department find time, staff and money to invest in this high-cost, yet necessary review?

A better process is to ask your attorneys to obtain a focused review of your  patents and claims that meet key criteria and to utilize available tools to prioritize and assist in their effort.

  • Start with a bench-mark assessment of your portfolio for breadth and construction - a typical patent portfolio claims analysis driven by IPVision's expert system developed with leading Fortune 100 corporate patent departments, enables answers within 2-3 days, with consistent, repeatable results.

  • With this understanding, ask your counsel to look at your most important patents - namely, those patents that are most important to your current and future revenue streams, those that are important to your competitive position (i.e., provide leverage over competitors), and those that are not already weakened given other concerns

  • Finally, combined with other analysis, integrate this review with a broader patent portfolio assessment with a view to ‘pruning' out legacy patents that are no longer worth funding.

With many clients, the current and ongoing savings can be quite significant and in some industries firms may find alternative tactics to monetize strong, yet non-strategic / non-core patents through sale or licensing.

Note, however, despite press focusing on patent monetization as a key driver for corporate executives, we caution that patent monetization is generally a longer-term effort and initiative.

Generally, focus first on asking the right questions about your patent position and how your patent portfolio protects and enables your business strategy.

With those answers in hand, you are then well-positioned to focus on work on patent monetization or patent related initiatives.

Given the Bilski opinion, and the certain to result press and legal discussion, now is a good time to consider how much you know about your own portfolio.

As with many treatments, invest a small amount now (in this example, obtain a portfolio claims assessment) and receive sizable returns and efficiencies by focusing your company's legal review and efforts.


Categories: Supreme Court, Patent Strategy, Patent Analysis