Creativity in Enhancing the Quality and Size of Patent Portfolios

• Author: Nate Phares - Ken Hartmann
• Position: Nate Phares is an associate at Harrity & Harrity, LLP, in Fairfax, Virginia, where he specializes in patent preparation and prosecution. Ken Hartmann is an associate at the same firm, where he specializes in preparation and prosecution of electrical, mechanical, and electro-mechanical patent applications. They can be reached, respectively, at...
• Pages: 51-53

Published in Landslide® magazine, Volume 11, Number 1, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.

This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

One of the most challenging choices for an organiza-

tion’s patent strategy is whether to focus on quality or

quantity. A small number of high-quality patents may

provide value and solid protection for some inventions, but inno-

vation can occur at a fast pace, which may require rapid lings

at a high volume. When presented with the challenge of increas-

ing portfolio size without sacricing patent quality or ballooning

the budget, you, the patent practitioner (whether in-house or in

private practice), may need to take creative steps to increase the

number of ideas that are harvested from inventors, the number

of patents that can be obtained for an idea or group of ideas, and

the efciency with which patents can be drafted. This article dis-

cusses several creative strategies to help grow a patent portfolio

for your clients, whether they are a business unit of an organi-

zation or the organization itself. These creative strategies can

be implemented prior to reaching the prosecution phase, both

before patent applications are drafted and during the application

drafting stage, without simply increasing patent expenditures.

Techniques for Engaging the Inventor

to Increase Invention Disclosures

Inventors are at the core of innovation and a company’s patent

portfolio. Accordingly, inventor outreach is very important

for your clients that seek to grow their patent portfolios.

Provide Patent Education for Inventors

The strength and quality of a patent portfolio can be

improved by the inventors’ knowledge of the value of patents

to the company and their willingness to participate in the pat-

ent process. As such, it is important for companies to educate

their inventors on what it takes to attain a patent, how a patent

is helpful to the company, when a patent can be attained for an

invention, and the like. As patent practitioners, it is important

to learn what your clients want out of their intellectual prop-

erty, so that you can relay this information to the inventors

during inventor interviews and client visits. You may consider

offering patent education presentations or workshops with

business units or engineering groups of your clients. These pre-

sentations or workshops may help to develop not only your

relationship with your clients and inventors, but also the rela-

tionship between the inventors and the patent process.

Encourage Inventor Incentives

For your clients, whether they are business units of an

organization or the organization itself, it helps when they pro-

vide incentives to the inventors. For many organizations, the

patent process is not factored into an inventor’s day-to-day

Creativity in

Enhancing

the Quality and

Size of Patent

Portfolios

By Nate Phares and Ken Hartmann

Nate Phares is an associate at Harrity & Harrity, LLP, in Fairfax, Virginia, where he specializes in patent preparation and prosecution. Ken

Hartmann is an associate at the same rm, where he specializes in preparation and prosecution of electrical, mechanical, and electro-mechanical

patent applications. They can be reached, respectively, at nphares@harrityllp.com and khartmann@harrityllp.com.