Few or No Filings? Starting a Patent Portfolio From Work You Already Paid For

A surprising number of established technology companies have filed very few patent applications. The reasons are understandable: the team was focused on customers, legal felt expensive, and nobody owned the question. The good news is that years of engineering work often contain material worth reviewing. The work has already been paid for.

What follows is business input to help you plan. Decisions about what to file, and whether anything is patentable, belong with your patent counsel.

Set expectations first

• Not everything old can still be filed. Work that has been public for some time may no longer be available for patent protection. Counsel will tell you where the lines are.
• Some of the best material is better kept as a trade secret.
• A small number of well chosen filings tends to be more useful than a large number of thin ones.

A four step start

1. Inventory. Review the code, products and roadmap for technical methods that look new. Start with what is unreleased or recent.
2. Screen. Run a quick search of published patents and literature for each candidate so obvious overlaps surface early.
3. Rank. Score candidates on business value and how central they are to your roadmap, not just on novelty.
4. Hand off. Give counsel short, clear summaries of the top few, with contributors and dates.

Look forward too

An inventory of existing work is a starting point. The companies that build lasting portfolios also make a habit of developing new inventions around where the business is headed, which can open new product lines as well as protect them. That is the larger engagement we run in our IP Discovery Sprint.

If you only want to know what is already in your code, start with the Codebase Invention Audit.

This article is general business information, not legal advice. Idea Partnership does not practice law. Consult licensed patent counsel about your situation.