Getting whatever you can sneak by a patent examiner probably never was a wise strategy, but it is true that there was a time in the industry when patents were viewed as a numbers game. Once upon a time, the patent business viewed patent acquisition, whether by organic growth or outside purchase, as aking to a corporate version of global thermonuclear war. If you want to succeed, the thinking went, you needed to have more warheads (i.e., patents) than your enemies. At times, the quality of those patent assets were considered at best secondary, if not completely irrelevant.
While the size of a patent portfolio isn’t completely irrelevant, it is worse than useless to have a portfolio full of low-quality patents. Not only is there a growing cost associated with obtaining patents in the first place, but there is also a growing cost of keeping patents alive. The seldom told story in the popular press is that many patents do not enjoy the full patent term because there are three separate and increasing maintenance fee payments that must be made to keep the patent alive for its full term. Specifically, maintenance fees are due at 3.5, 7.5 and 11.5 years after a patent has issued. For a large entity, these fees are $1,600 for the first maintenance fee payment, $3,600 for the second, and $7,400 for the third.
If you are an entity that acquires many hundreds or thousands of patents a year, you simply cannot afford the financial burden of keeping low-quality assets alive that have no chance of being used either defensively, offensively, or as part of a licensing business model. If you get patent claims that won’t stand the test of time, all you are doing is wasting money paying for the issuance of meaningless rights, and then wasting more money to maintain a patent that is nothing more than a dead weight on a patent portfolio.
Business professionals, and patent professionals charged with managing outside patent prosecution firms, must become more proactive in order to ensure that a proper foundation for patent rights is being laid and the rights being obtained are not unnecessarily limited by careless drafting. It also means that, at times, hard decisions will need to be made about the continued viability of a patent application, and perhaps filing that next Request for Continued Examination (RCE) doesn’t make a lot of sense. If a patent application is that important, you may need to actually file an appeal. Spending good money after bad in a foolish attempt to convince a patent examiner that has made up his or her mind is just as budget-reckless as maintaining low-quality patents.
Obviously, there are a lot of considerations that go into any prosecution and maintenance strategy, and perhaps stalling and waiting for a better climate is the best strategy, such as in certain software-related fields or when dealing with gene patents, for example. No “one size fits all strategy” can be employed any longer by those who want to achieve good, strong patent rights. This undeniable reality makes it all the more important for a proactive approach by well-informed and knowledgeable business people who continue to have one eye on the prize and another eye on the budget.
Tags: maintenance fees, patent, patent portfolio, Patent portfolios, patents
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