A portfolio should address the business's important technical advantages. In this Schell IP Short, Jeff Schell explains why patent strategy needs to consider the product and the alternatives a competitor might choose.
Map the claim question to the commercial question
Identify the customer benefit the company wants to preserve. Then ask which technical features deliver it and how another team might implement a competing solution.
That exercise can expose a gap between an early prototype and the product the company intends to sell. A filing needs adequate technical support; simply listing every imaginable variation does not establish useful scope.
Review the roadmap with counsel
- Mark the current product, planned improvements, and likely alternative implementations.
- Identify what is already disclosed in filed applications.
- Separate new inventive work from changes supported by an earlier disclosure.
- Revisit commercial priorities before committing to further filings.
A patent count is not a measure of how well those issues have been addressed. The useful outcome is a supported explanation of what the portfolio may protect and why that matters to the business.
Related support from Schell IP
- Patent portfolio expansion
- Competitive patent design-around
This article provides general information. It does not replace legal advice about a particular invention, company, or transaction.
