Using Patent Rights
While owning patents or patent application itself may have worth, to use patents more effectively may be desirable. To obtain and maintain patents cost much and the cost for patents that will not be used may be just expenses. However, if the patents are estimated properly and used effectively, obtaining patents can be investment. Following recent intensification of global competition and the spread of the Open Innovation, we’ve had many chances to be consulted about value estimation of patent rights or how to use patent rights.
Using patent is put into practice through two steps: the first step in which the value of patents is estimated; and the second step in which the patents are actually used.
Estimating the value of patents (1st Step)
The value of patents is determined by estimating the following elements.
- The validity of the patent (Patentability):
Even if a patent have been issued, it could be invalidated by a reason overlooked in its examination. It is necessary to check on whether the examination included any important overlooking.
- Whether there is a product or service within the scope of the patent right:
It is necessary to check on whether the actual production or selling of the product will be a practice of the patent invention. Some products can be out of the scope of the patent right by changing the designs.
- The market scale of the products or services, and its prediction:
The value of the patent of which technology is excellent but not actually used in any market is lower than that of the technology which is used in a large market.
- Patent terms:
For example, the value of the patent which has 10 years of patent term is higher than that of the patent whose patent term has been expired.
The value of patents should be estimated in consideration of all of these elements
INFORT estimates the value of patents in consideration of accomplishment degrees of patent portfolios in companies by Portfolio Strength ™.
Using Patents (2nd step)
The following are typical methods for using patents.
- To prevent the company’s own technology from becoming unavailable by a third party’s patent (practice by itself)
- To open the company’s own technology to the public as a patent application prevents the technology from becoming unavailable by a third party’s patent filed later. If a third party obtained a patent for the technology developed by another company, it would become a risk that the company could not continue its business.
If the company has used the technology since before the filing date of the third party’s patent application, the company could have a prior user’s right. However, it is very difficult to be allowed the prior user’s right, and it will need many costs and much labor to get allowance of the prior user’s right. Thus, to open the company’s own technology to the public as a patent application is safer way.
- To prevent third parties from using the company’s technology (discouragement, warning, negotiation, and lawsuit)
- If a third party’s use of the company’s technology becomes a practice of the invention of the patent owned by the company, the company can prevent the third party from using it. Actual actions for it are as follows.
- To wait until the company’s patent application is opened to the public.
We can expect that it will discourage third parties from using the company’s technology.
- To do a press release about the company’s patent.
It will discourage third parties from competing against the company.
- To send a warning letter
- To file a patent infringement lawsuits
It is important to take reasonable action based on the results of patent evaluations and patent value estimations. For example, if you warned a third party, without patent evaluation and patent value estimation, that its products infringed your patent, and if the patent was invalidated later, your conduct would be considered an unfair competition.
- To make a relationship of coexistence and co-prosperity by licensing the company’s technology (Cross-license, license out)
- In case that it is no problem for the company to have a third party use the company’s own technology, the company can license out its own technology to third parties. If the third party has the patent which the company needs to use, the company can also cross-license with the third party. Here, the company’s technology needs to be the technology which the third party actually uses or would like to use. The technology which only the owner uses cannot be used like this, even if it is excellent.
- To have a third party use the company’s technology (selling, license out)
- A company will not use the company’s technology, even if it is the technology developed by itself, in the case that the company adopts another technology or changes its business area.
In this case, the company can recover the funds invested to the technology by licensing or selling the patent to third parties.
In INFORT, patent attorneys who have experienced many cases for large and small companies in various countries for more than 15 years will help their clients in using patents based on their rich experience.
Further, patent attorneys specializing in obtaining patents and patent attorneys specializing in using patents as a team will support the clients so that the clients can obtain and use patents effectively. Using patents will become easier if the clients prepare for it from the early stage of R&D activities.
As an example, INFORT has supplied services listed below to mainly venture companies, which have limited resources for administrating their intellectual property, and these services have had good reputations.
- Support for obtaining IPRs and planning to use it in accordance with their business strategy
- Inventory of IPRs (patent right)
- Evaluation of the value of patents
- Search for and making an opinion on patent infringement by a third party
- Support and representative in making a warning to an infringer and in negotiating for licensing
- Support in a lawsuit of patent infringement
- Support in purchasing or selling patents
- Support in drafting a license contracts
Further, INFORT also supplies other support such as patent clearance, drafting an opinion, drafting a warning letter, or support in responding to NPE (Non Practicing Entity).