Patent portfolio

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The patent portfolio is an instrument of strategic corporate planning . It is used to structure and evaluate the patents available in the company . With the help of a patent analysis, a two-dimensional patent portfolio matrix is ​​created. Based on the position of the patent in this matrix , conclusions can then be drawn about the value and significance of the patent and strategic action measures can be derived.

definition

Patents encompass technology , novelties and effects of a company resulting from innovations (e.g. improving the company's image, securing competitive advantages) that can be protected under national or international law. They are also characterized by the following properties: "Patents are granted for inventions in all fields of technology, provided they are new , involve an inventive step and are commercially applicable ." ( Section 1 (1) PatG)

The portfolio concept has its origins in the financial sector and was originally intended to determine an optimal investment portfolio . Since the beginning of the seventies, it has been used in a variety of ways in companies and is used, for example, in corporate management , technology and patent management or in marketing to determine an optimal portfolio and the corporate strategy derived from it .

The two axis dimensions of a portfolio can in principle be selected as desired. Typically, one chooses an environmental dimension, i.e. a variable that can only be influenced to a limited extent or not at all by the company itself (in this example, patent attractiveness) and a characteristic that the company can directly influence, a so-called company dimension (in this example, patent strength).

The patent portfolio combines these two concepts and shows the actual situation of individual companies with regard to their patents graphically in a two-dimensional matrix. Based on the position of the patent in this portfolio matrix, the patent situation of the company can be assessed, analyzed and then converted into future recommendations for action.

Patent portfolio analysis

The patent portfolio analysis is structured as follows:

Fig. 1: Steps in a patent portfolio analysis
Source: Own illustration

inventory

As a rule, tracking the patents that a company owns is not a problem. Difficulties only arise when a company owns a large number of patents. It is advisable to create a smaller number of comparable objects to be examined by creating patent or technology fields.

For this purpose, the objects of investigation are grouped together in homogeneous patent groups based on similarities. However, company specifics and general business conditions must be taken into account in individual cases. For example, all essential technology fields, including those that are dominated by competitors, must be taken into account. The groupings can then be analyzed in more depth in the course of further analysis.

Similarities for the summary of the patent or technology fields can e.g. B. be:

  • Protection of the same invention
  • Protection of a Technologically Related Invention
  • Protection of inventions that are related to the strategic actions of the company
  • Protection of inventions that are jointly used in company products or processes.

For the next process step, the determination of the actual position, the question of the evaluation of individual patents is still of central importance regardless of the patent fields formed.

Determination of the actual position

The determination of the patent position is mainly based on the two criteria “attractiveness of the patent” and “strength of the patent”. The patent appeal cannot be influenced by the company itself and is therefore part of the environmental dimension of the portfolio concept. The strength of the patent, on the other hand, can be directly influenced by decisions made by the company and can therefore be assigned to the company dimension of the portfolio concept.

In the following, the evaluation of the patents with regard to the two criteria is shown in general terms. In the special application, as in the preceding phase, the company specifics must be taken into account.

Patent attractiveness

The attractiveness of a patent is primarily influenced by the characteristics of the invention itself and the characteristics of the property right. These two features are presented again in detail below.

The “features of the invention itself” are understood to mean the following properties.

1. The historical and technical significance of an invention:
  • The amount of research and development expenditure.
  • The staff dedicated to research and development.
2. The grant of a patent:
  • The fact that a patent has been granted for the innovation already suggests that the novelty is attractive and worth protecting.
3. Quotes that a patent receives in writings:
  • Existing patent documents are used to examine a patent . Citations are noted on the cover of the granted patent.
4. The economic importance of a novelty:
  • The object value of the possible income generated by the innovation.
  • The number of international patent applications : Patents can only be applied for territorially. Due to the considerable increase in costs caused by a further registration in another country, it can be assumed that the novelty is of high economic importance.
  • The number of classification symbols: Allocation to a large number of patent classifications (International Patent Classification, IPC for short) suggests that the innovation is attractive and worthy of protection, and that it is therefore of great economic importance.

In contrast, the following properties are summarized under the “characteristics of the property right”.

1. The patent is a factor for increasing earnings / securing earnings:
  • Comparison of patent-related income and effort.
  • Use of the patent for advertising messages.
  • Development of a corporate identity based on the patent .
2. The patent has an important strategic role in certain technological areas of the company:

In the next step, the fulfillment of these factors by the patent is assessed on a scale (e.g. from 0-10). It is advantageous to start the evaluation first with the more easily evaluable invention-related features and then to continue with the property right-related features. The following table shows the rating scale for assessing the attractiveness of a patent.

Points description
10 Very attractive patent with above-average high and reliable yield expectations and / or an outstanding role for further technological development or an important strategic function in a certain technological area (e.g. preventing a competitor's project).
... ...
5 Attractive patent with an average high return expectation and / or technical importance or strategic role.
... ...
0 Completely meaningless patent with no discernible earnings prospects and / or technologically relevant novelty as well as no significant competitive position.

Table 1: Scheme for evaluating the attractiveness of a patent

Patent strength

In terms of the procedure, the strength of the patent is similar to the assessment of patent attractiveness. The two main criteria that describe the strength of a patent include the “strength of the legal position” of the patent and the “strength of the patent owner”, i.e. the possibilities of the patent owner to enforce the legal position conveyed. These two criteria are discussed again below.

The “strength of the legal position” is characterized by the following properties.

1. Status of the patent in the approval process:
  • Only after the patent disclosure, i.e. the publication of the disclosure document ( Section 32 ), does temporary protection arise, which is accompanied by a claim for compensation ( Section 33 ). Full patent protection , on the other hand, is only realized after the patent has been granted ( Section 9 ).
2. The scope of patent protection:
  • Strong patent protection is characterized by a large number of broad and persistent claims.
3. Choice of patent system:
  • Patent systems are the countries in which a patent is filed. Different countries have established test procedures of varying severity. In Japan, patent opposition can e.g. B. be collected before AND after the patent is granted. The patent is therefore to be valued weaker in Japan.
4. Instruments available to secure legal status:
  • Does the company have the capital and knowledge to take action against patent opposition or patent infringement?

The following properties are summarized among the features that characterize the “strength of the patent proprietor” itself.

1. Financial and human resources of the company:
  • According to the prevailing opinion, the main reasons for not filing a patent application are expensive patent litigation and difficulties in uncovering patent infringements.
2. Strength and quality of the patent department and patent attorney support.

As with the attractiveness rating, the patents are rated on a scale with regard to the properties described above. The following table illustrates the rating scale for assessing the strength of the patent.

Points description
10 Very strong patent as a legally valid property right with broad and enforceable claims of a large company with an efficient patent department, which is systematically protected by defensive rights and does not affect the interests of a competitor with strong resources.
... ...
5 Average strong patent as a granted property right with favorable claims of a company with its own patent department, which is secured by some blocking protection rights and does not affect any significant competitor.
... ...
0 Very weak patent position as an as yet undisclosed application with an uncertain claim situation and without any safeguarding measure by a smaller company without its own patent department, which affects the essential interests of strong competitors.

Table 2: Scheme for evaluating the strength of a patent

Following the evaluation, the position in the portfolio matrix can be removed for each patent or technology field based on the evaluation points achieved. In the final step, action measures and strategies can now be derived.

Deriving action measures

The figure below illustrates the basic structure of patent portfolios. The attractiveness of the patent is illustrated on the ordinate and the patent strength on the abscissa. The assessment bases have already been explained in phase 2, determining the actual position. The relevance of the technology fields for the company is symbolized by the size of the circular area. It is determined by the proportion of patents in the technology field under consideration in relation to the total number of patents of the company. This shows which technologies the company under review focuses its research and development efforts on. Furthermore, strategies can be derived from a patent portfolio. These follow the patent life cycle shown by the arrows and are briefly explained below.

Fig. 2 Patent portfolio,
source: Baum / Coenenberg / Günther (2007), p. 238 after Faix (2001), p. 153.
  • If the patent attractiveness is high and the patent strength of the company is (still) low, selective investing is recommended. The strength of the patent can be expanded through a broad registration of utility models , blocking patents, etc. It is advisable to avoid any delay in registering property rights and to maintain granted property rights for as long as possible. If a third party attacks the patents, an amicable solution to the problem must be sought with the attacker due to the weakness of the patent. Direct confrontation is to be avoided. Due to the high level of patent attractiveness, infringements of one's own patents must be vigorously pursued. The primary concern of the selective investment strategy is aimed at expanding the patent strength in order to move the patents of the portfolio into the upper right quadrant.
  • Patents that are in the upper right area are due to their strength to be held in any case and, especially in the case of relevant individual patents, to be expanded with the help of blocking patents (investing) . In view of the patent strength now obtained, a confrontation with patent infringers or attackers can be risked. Over time, patent appeal is likely to wane and patents will move to the lower right quadrant.
  • Patents that are in the lower right quadrant have a low patent attractiveness and a high patent strength. As a result, patent activities must be limited. Investments are made more selectively if this enables licensing or sales to be realized. Patent infringements and attacks on property rights are only sporadically prosecuted or fended off, and cooperation may be worthwhile. Measures against competing patents are no longer to be pursued with vigor.
  • Patents in the lower left quadrant show low patent attractiveness and low patent strength. Here it is advisable to give up or sell the patents (disinvestment) , with the exception of those for which an increase in importance is to be expected. Instead, human and financial resources should be invested in patent fields that are highly attractive.

conclusion

In conclusion, one can deduce that the patent portfolio analysis allows a precise observation and evaluation of technologies provided with property rights. This enables technology-oriented companies to generate special strategies aimed at developing, later maintaining or building up patents.

Furthermore, with a patent portfolio, not only can statements be made about the overall situation of a company, but statements about the value of individual patents for the company can also be made. For the latter, conclusions can be drawn about the importance and value of the patents for the company by assigning the patents to specific technology fields. On the other hand, patent portfolios are not limited to corporate use only. Basically, a portfolio can be created for any reference unit. For example, technological weaknesses and strengths of a single business unit can be revealed.

It should be noted, however, that it is often difficult to estimate the value of a patent and that this can vary due to legal and geographical conditions.

literature

  • HG Baum, A. Coenenberg , T. Günther: Strategic Controlling. 4th edition. Schäffer-Poeschel, Stuttgart 2007, ISBN 978-3-7910-2545-2 .
  • J. Ensthaler, K. Strübbe: Patent Evaluation . A practical guide to patent management. 1st edition. Springer, Berlin 2006, ISBN 3-540-34413-6 .
  • A. Faix: The patent portfolio analysis - methodical conception and application in the context of strategic patent policy. In: Journal of Planning. 2, 2001.
  • K. Matzler: Intangible Assets. Handbook of intangible assets. 1st edition. Schmidt, Berlin 2006, ISBN 3-503-09075-4 .
  • F. Pleschak, H. Sabisch: Innovation Management. Schäffer-Poeschel, Stuttgart 1996, ISBN 3-7910-6017-1 . (UTB for Science: Large Series)

Individual evidence

  1. ↑ HG. Baum, A. Coenenberg, T. Günther: Strategic Controlling. 4th edition. Schäffer-Poeschel, Stuttgart 2007, p. 236.
  2. ↑ a b c d e f g K. Matzler: Intangible assets. Handbook of intangible assets. 1st edition. Schmidt, Berlin 2006.
  3. ↑ HG. Baum, A. Coenenberg, T. Günther: Strategic Controlling. 4th edition. Schäffer-Poeschel, Stuttgart 2007, p. 237.
  4. ↑ A. Faix: The patent portfolio analysis - methodical conception and application in the context of strategic patent policy. In: Journal of Planning. 2, 2001, p. 289.
  5. ↑ A. Faix: The patent portfolio analysis - methodical conception and application in the context of strategic patent policy. In: Journal of Planning. 2, 2001, p. 292.
  6. ↑ A. Faix: The patent portfolio analysis - methodical conception and application in the context of strategic patent policy. In: Journal of Planning. 2, 2001, p. 153ff.
  7. ↑ J. Ensthaler, K. Strübbe: Patent Evaluation . A practical guide to patent management. 1st edition. Springer, Berlin 2006, p. 33.