Learn how quadrant is balancing offensive and defensive Patent Strategies

How Quadrant Technologies Helps in Balancing Offensive and Defensive Patent Strategies

In our previous article, we explored how both offensive and defensive patent strategies play a critical role in shaping a company’s intellectual property management. Offensive strategies focus on leveraging patents for market advantage and revenue, while defensive strategies prioritize protection and risk management. This article delves into patent strategies offered by Quadrant Technologies and how effectively it balances between these strategies to help companies to navigate the complexities of intellectual property while fostering innovation and protecting their market position.

Offensive patent strategies:

They allow companies to leverage their intellectual property as a tool for competitive advantage. These strategies include asserting patents through litigation, licensing for revenue, blocking competitors, and strategically building patent portfolios. By using patents offensively, Quadrant Technologies helps companies to generate significant revenue, protect their market share, and strengthen their position in the industry. These tactics are essential for companies in competitive industries such as technology, security, and networking.

Some Offensive Patent Strategies employed by Quadrant Technologies

• Patent Valuation: Patent valuation is the process of determining the economic value of a patent or a portfolio of patents. This is essential for various business activities such as mergers and acquisitions, licensing, litigation, and investment decisions. Patents can provide significant financial benefits through exclusivity, licensing revenue, and blocking competitors, making accurate valuation critical for strategic decision-making. The valuation process involves analyzing legal, technical, and market factors.

Core Metrics used by Quadrant Technologies for Post-Grant Patent Valuation

Below key metrics are used to assess the value of patents, depending on the purpose and context of the valuation:

• Estimate the value of a patent based on the cost of maintaining the patent by paying maintenance fees.
• Determine the ability to generate future economic benefits that the patent will generate over its lifetime.
• Whether the technology is already commercialized, in development, or only at the idea stage by competitors of interest.
• What is the likelihood of future implementation of the patented innovation by considering the current technology and/or market trend.
• Evaluate patent strength by considering the breadth, enforceability, and detectability of claims of the patent.
• How unique and groundbreaking the patented technology is compared to existing solutions.
• The potential for generating revenue from the patent through product sales or licensing.
• If competitors can easily develop alternative technologies that avoid infringing on the patent.
• How closely the patent aligns with the company’s core products or future direction.
• Patent valuation based on weighting patent family size and the number of backward and forward citations.

Core Metrics used by Quadrant Technologies for Pre-Grant Patent Valuation

Below key metrics are used to assess the value of patents before the grant of the patent or after receiving a Notice of Allowance (NOA) for the patent.

• Estimate the value of a patent application based on the cost of obtaining the patent itself.
• Evaluate patent strength by considering the breadth, enforceability, and detectability of claims of the patent.
• Amendment of the claims to cover a wider range of products, preventing competitors from designing around the invention or to be in line with the current technology trend.
• Exploring an opportunity to broaden or modify patent coverage by filing continuation application to increase the market value.
• Determine the ability to generate future economic benefits that the patent will generate over its lifetime.
• Whether the technology is already commercialized, in development, or only at the idea stage by competitors of interest.
• What is the likelihood of future implementation of the patented innovation by considering the current technology and/or market trend.

Infringement Analysis

Infringement analysis plays a central role in offensive patent strategies, which aim to assert patent rights aggressively to protect market position, generate revenue, or limit competitors’ activities. As an offensive patent strategy, infringement analysis is used to identify when a competitor’s product, service, or technology infringes on a company’s patent. The company can then take legal or strategic actions, such as pursuing litigation, demanding licensing fees, or negotiating settlements, to assert its intellectual property rights.

Quadrant Technologies involves in evaluating a competitor’s product or process to determine if it violates the patent holder’s exclusive rights. We compare the claims of the patent to the features, components, or methods used by the competitor. The goal is to show that the competitor’s technology “reads on” the patented claims.

Steps performed by us in Infringement Analysis when used as an Offensive Strategy

• Patent Selection: Identify patents in the portfolio that are relevant to a competitor’s product or process. These may be critical patents that cover core technologies in the industry.
• Competitor Product Analysis: Gather technical details about the competitor’s product or process. This may include public data like product manuals, marketing materials, source code, product teardowns, or technical reports.
• Claim Mapping: Compare each claim of the patent to the competitor’s product, feature by feature. A claim chart is used for this purpose, mapping the patent claims to the technical elements of the competitor’s product.
• Legal Assessment: Analyze the validity of the patent itself to ensure that it is enforceable. This may include checking for prior art or potential invalidity defenses.

Licensing Deals

Licensing as an offensive patent strategy involves leveraging a company’s patent portfolio to generate revenue, control competition, and assert dominance in the market. Instead of passively holding patents, companies actively seek out opportunities to license their patents to other businesses, often through a combination of strategic negotiations and legal pressure. This approach can drive significant business advantages, such as monetizing intellectual property (IP), increasing market share, and setting industry standards.

Quadrant Technologies helps companies to make licensing deals judiciously. Our IP experts enable companies to maximize the value of their IP by generating revenue, controlling competitors, and influencing market trends. By aggressively pursuing licensing agreements and strategically leveraging their patents, businesses can create ongoing revenue streams, reduce the risk of litigation, and maintain a competitive advantage.

Our Approach while using Licensing as an Offensive Strategy

• Identifying patents in the portfolio that are relevant to a competitor’s product or process.
• Using infringement analysis by preparing claim charts to identify potential infringements. Once identified, our clients can offer licenses, sometimes under the threat of litigation if the potential licensee refuses to comply.
• In case of anticipated infringement by our clients, preparing claim charts not only against our client’s competitors but also for competitors’ competitors to facilitate strategic cross-licensing deals.
• We attempt to cover all possible product segments of competitors for better licensing negotiations, often backed by the threat of a patent infringement lawsuit. This enables our clients to force competitors to use their products as a means of paying royalty.
• Patent Validity Search

Patent Validity Search typically conducted by the patent owner / assignee to determine the authenticity of its enforcement. Our skilled IP professionals help the client to check if their patent is strong enough to withstand a future lawsuit. The goal is to confirm the validity of our client’s patents used to generate infringement analysis study against the competitor’s product. Offensively performing the patent validity search protects our clients from future litigation.

Here are steps on how we conduct a patent validity search:

• Understand the Patent
• Search Scope
• Search Databases
• Search Strategy
• Types of Prior Art to Consider
• Analyse Prior Art
• Legal Grounds for Validity
• Review and Analyse Results

Defensive patent strategies

By knowing the essence of defensive patent strategies, Quadrant Technologies offers multiple advantages to clients, from reducing litigation risk and fostering freedom to operate, to cost savings and cross-licensing opportunities. These strategies help protect companies from competitors and patent trolls, while also encouraging ongoing innovation. For businesses that prioritize long-term growth and market security, adopting a defensive patent strategy can provide significant competitive advantages and legal safeguards. It serves as essential strategic tools for companies operating in highly competitive industries, particularly those dominated by rapid technological advancements.

Some Defensive Patent Strategies employed by Quadrant Technologies

• Patent Invalidity SearchPatent Invalidity Search typically conducted by a defendant in a patent infringement lawsuit to invalidate the competitor’s patent. We assist our client to find prior art that the patent examiner may have missed, and to use that evidence to contest the patent’s validity. Proving that the patent is invalid can lead to the dismissal of the lawsuit or a more favourable settlement. It prevents costly damages, royalties, or injunctions that could otherwise hinder operations of the client.

  Here’s a brief guide on how we conduct a patent invalidity search:

  1. Understand the Patent
     • Review the claims of the patent carefully, as these define the scope of the patent’s protection.
     • Read the patent’s detailed description (specification) to understand the invention and how it works.
  2. Types of Prior Art
     • Patent Literature: Prior patents or published patent applications that predate the patent you are investigating.
     • Non-Patent Literature: This includes scientific papers, technical manuals, industry publications, and other publicly available documents.
     • Products in Use: Evidence that the invention was publicly used or sold before the patent’s filing date.
  3. Search Databases
     • Patent Office Databases: Use databases such as the USPTO (United States Patent and Trademark Office), WIPO (World Intellectual Property Organization), and Espacenet to search for prior patents.
     • Commercial Databases: Searching for prior arts in paid databases like Derwent, Questel Orbit, and free databases like Google Patents, Free Patents Online and others.
     • Non-Patent Literature Databases: Google Scholar or other technical and academic databases are great sources for non-patent prior art.
  4. Keyword Search
     • Use relevant keywords, synonyms, and technical terminology related to the patent to conduct broad searches.
     • Search for prior art that may anticipate the claimed invention, either in whole or part.
  5. Class-Based SearchSearching based on patent classification codes (e.g., CPC or IPC codes). These codes are assigned to patents based on their subject matter and can be used to locate relevant prior art.
  6. Date RangeLooking for prior art that predates the priority date of the patent in question. The priority date is usually the date of the first filed application.
  7. Analyse the ResultsOnce we have identified potential prior art, we compare it to the claims in the patent. For a claim to be invalidated, the prior art must disclose every element of the claim (anticipation) or make it obvious.
  8. Legal Grounds for Invalidity
     • Anticipation (35 U.S.C. §102): The patent is invalid if a single prior art reference discloses every element of the claimed invention.
     • Obviousness (35 U.S.C. §103): A patent can be invalidated if the invention is an obvious combination of prior art references.
• Infringement AnalysisPatent infringement as a defensive strategy, often referred to as “defensive patenting” or “mutually assured destruction” (MAD) in the patent world, involves a company using its own patent portfolio to deter competitors or potential litigants from pursuing legal action for patent infringement. This strategy leverages the company’s patents to create a situation where both parties hold valuable patents that could be asserted against each other, leading to cross-licensing agreements, settlements, or a mutual understanding to avoid litigation.

  Quadrant Technologies helps companies avoid costly legal disputes by countersuing with client’s own patents that a competitor might be infringing, leading to a stalemate or negotiation. Instead of pursuing costly litigation, it pressurizes the competitors to cross-license each other’s patents, allowing both parties to continue using each other’s patented technologies without further legal action.

Steps Performed by Us in Infringement Analysis when used as a Defensive Strategy

1. Patent Selection:Identify patents in the portfolio that are relevant to a competitor’s product or process. These may be critical patents that cover core technologies in the industry.
2. Competitor Product Analysis:Gather technical details about the competitor’s product or process. This may include public data like product manuals, marketing materials, source code, product teardowns, or technical reports.
3. Claim Mapping:Compare each claim of the patent to the competitor’s product, feature by feature. A claim chart is used for this purpose, mapping the patent claims to the technical elements of the competitor’s product.
4. Legal Assessment:Analyse the validity of the patent itself to ensure that it is enforceable. This may include checking for prior art or potential invalidity defences.

Patent Validity Search

The patent owner conducts a validity search primarily to assess the strength of their own patent and to anticipate potential challenges. This is particularly useful in preparation for litigation, licensing negotiations, or when enforcing the patent against others.

Quadrant Technologies conducts a validity search to ensure that the patent is robust and can withstand any validity challenges before enforcing a patent against an infringer. This confirms that the patent is valid and enforceable, making it difficult for potential defendants to invalidate it in court.

Here are the steps on how we conduct a patent validity search:

• Understand the Patent
• Search Scope
• Search Databases
• Search Strategy
• Types of Prior Art to Consider
• Analyse Prior Art
• Legal Grounds for Validity
• Review and Analyse Results

Conclusion

A comprehensive patent strategy involves a delicate balance of offensive and defensive manoeuvres. Offensive patent strategies aim to maximize the competitive and financial value of patents by asserting them against competitors, while defensive strategies focus on protecting the company’s innovations from litigation and ensuring freedom to operate. By combining both strategies, Quadrant Technologies helps companies strengthen their market position, reduce legal risks, and drive long-term growth.

At Quadrant Technologies, we help our clients with Patent Services. Explore how our IP capabilities can help you safeguard your inventions and innovations! Please drop an email at marcomms@quadranttechnologies.com to contact our Patent Experts.