Amendments for Patent Quality
When looking at building a targeted patent portfolio, I spend a considerable amount of time considering the Patent Quality of the portfolio content. This can roughly be translated to a boardroom discussion as not just filing patents to fill a metric, but rather filing patents that have been drafted to have business and technology alignment + legally enforceable + economic value.
However, it is one thing to talk about using Patent Quality as an output of an IP Strategy to create a sustainable advantage, and yet another to extend practical guidance to both inventors and their prosecuting firms to execute on it.
A recent paper by Kohler, Blind, and Thumm entitled “An Analysis of the Filing Behavior for Essential Patents in Standards” from the Berlin University of Technology and the European Patent Office, gives some insight into steps to create a patent that has a high propensity for market protection, instead of serendipitously creating something of value.
While not specifically calling out how patents should be prosecuted, there are two complimentary points on this topic to draw from the paper: First, essential patents have a higher number of claims and claim amendments as well as other relevant characteristics (the number of amendments, share of divisionals, the share of references, etc.). Second, and perhaps more interesting, essential patents are amended ~25% more often than patents not relevant for the standardisation context.
A take-away point for execution to ensure a quality patent: Ongoing prosecution by legal should be reviewed by the business for both market and technical match.
It is this standard-focused amendment model to ensure a targeted patent that I suggest can likely be mirrored with a general portfolio. During prosecution this translates to the actions of having the prosecuting attorney work with the business / inventors to amend the application based on market use. It sounds like a simple point, but in practice I find most prosecuting attorneys and businesses ‘move on’ after the original patent is filed and don’t include the ongoing prosecution as important as the original filing, resulting in a patent that is prosecuted as quickly as possible.
I suspect when analyzed the 25% will vary by industry, but at the very least the 25% increase in amendment rates cited by the paper gives at least an interesting benchmark for counsel to consider.
As an in-house IP Manager, this benchmark could be easily confirmed by comparing known “quality” patents to a sampling of the entire portfolio. As a result, this would give a rough internal metric to support a proposal for increasing amendments, taken both as n increase in attorney prosecution cost, and inventor/business employee time commitment required. But as always this presumes businesses are looking to increase competitive advantage with a patent portfolio instead of simply counting patent numbers as the key metric.