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Law360 (April 17, 2020, 12:44 PM EDT )
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| Elizabeth Manno Banzhoff |
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| Amanda Tessar |
Others, of course, are getting no break even during this pandemic. If you are among those with additional time on their hands, this is a great opportunity to finally knock out some of those long-term projects that you've been pushing to the back burner. We provide below a number of suggestions to consider that will allow you to provide value even when your normal docket of work has temporarily slowed.
1. Finally tackle your patent portfolio.
Now is a good time to evaluate your existing patent portfolio to determine its strengths and weaknesses. Do you have sufficient patent protection for new technologies? Where are the holes with weaker coverage for certain types of technology? Have your patents been drafted in such a way that they will be ready to enforce, if enforcement is needed?
Conversely, are there patent families you are maintaining that are no longer relevant to the company's current business strategy, either due to sales of product lines or exiting certain business areas, that you can abandon? This might be a great time to trim the fat and save your company substantial maintenance fees for patents that have little value to the company's current business.
Outside counsel have tools that may make this type of review efficient and can provide advice as to how your current portfolio holds up against a changing litigation landscape.
2. Analyze competitor patent portfolios.
Likewise, this can be a good time to review your competitors' patent portfolios — although this needs to be done with careful attention and thought to privilege and willfulness concerns. While it can be challenging to monitor all of a competitor's recent patent filings, you want to know if your own company is starting to lag. Additionally, this analysis can inform your overall strategy for obtaining patents and the areas in which you need to beef up your portfolio (see #1).
3. Learn about the patent pools that are active, particularly for SEP patents.
An analysis of standard-essential patent pools (and individual companies aggressively asserting portfolios of SEP patents) that are relevant to your industry can save you time down the road.
The allegedly fair, reasonable and nondiscriminatory rates of these aggressors vary dramatically, as do issues relating to the size and scope of their portfolios, their approaches to licensing demands, potential license defenses that you may have through your own company's or your supplier's existing licenses and the strategies that are effective against them.
Codec portfolios are particularly active right now, but there are plenty of cellular, Wi-Fi and other such portfolios still being regularly asserted. Take this time to get ahead of the game on these issues, again in a manner that takes care to avoid potential willfulness issues.
4. Strengthen standard indemnity terms and IP warranties.
It is often not until a dispute arises that companies realize their standard indemnity terms are not as favorable as they thought. Now is an excellent time to review your company's standard contractual indemnity and warranty language (or the language in its most important contracts) to identify areas for improvement. When the time comes for negotiating additional contracts when the economy picks back up, you'll be prepared with concrete recommendations to improve these terms for your company.
5. Evaluate standard arbitration terms for your technology.
Similarly, your company's existing arbitration clauses can be analyzed and improved to create more favorable arbitration terms for future disputes. With the guidance of outside counsel experienced in the pros and cons of arbitration practice, you can identify areas that may be a potential hassle if an actual arbitration is needed.
For example, you can consider which set of rules you want to apply to your arbitrations, how many arbitrators you really need and want to pay for, whether you prefer defined discovery limits, and whether and how you want the arbitration to be phased. Considering these issues and creating more detailed and concrete arbitration terms will save the company time and money when later faced with an arbitration dispute.
6. Find the value of your IP portfolio.
With a potential economic recession looming, a strategy to increase the value brought by your company's existing patent portfolio might be better received by your company's leadership than it would have in the past.
If you have not yet evaluated how you might generate income from your patents, or if it has been some time since you've considered such a strategy, now is a good time to see if there are any areas ripe for development.
For example, are there industries or technologies in which your company holds patents where it no longer sells products that are suitable for licensing to other companies? Should patents be sold off or asserted?
7. Evaluate offensive inter partes review targets.
At this time, the Patent Trial and Appeal Board is not extending any deadlines for filing a petition for inter partes review under the Coronavirus Aid, Relief, and Economic Security, or CARES, Act.[1] If there is a patent troll or competitor who has targeted you or your customers, or you think may do so soon, you may want to consider whether now is the time to launch strategic IPR petitions targeting patents in their portfolios.
Outside counsel can also assist you in evaluating whether there are additional patents beyond those asserted in any litigation (or anticipated to be asserted) that can be included in IPR petitions to create maximum leverage in these offensive IPR actions.
8. Review IP policies.
When was the last time you reviewed your written internal IP policies? Now may be a good time to revisit your invention disclosure policies and what incentives you are offering (if any) to employees to ensure that they are properly documenting any patentable inventions they develop.
Do you have a policy about whether your engineers are allowed to search for and review competitor patents? Should you? Consider crafting specific policies relevant to your business that can aid in solidifying your company's IP opportunities.
9. Use your outside counsel for training.
Outside counsel are always looking for ways to add value for their clients. Many have training in a variety of areas that they can convert to webinar format for you and your legal department. Whether it's a training on invention documentation, pitfalls in email communications produced in litigation or awareness of indemnity provisions in supplier contracts, now is a good time to accept those offers you've been receiving for training sessions and provide additional education for your teams internally.
10. Reevaluate your global IP strategy.
Have you been meaning to get your leaders in IP from various continents together to create a uniform strategy? You can leverage your internal thought leaders and IP strategists in a group brainstorming session to highlight various issues in different regions and how their IP strategy is working.
Your employees can highlight their own successes and potential pitfalls they've avoided, assisting others in different regions with their own issue-spotting. Brainstorming also gets all stakeholders involved and invested in the resulting strategy you set based on that meeting.
This is an unprecedented and strange time. Undoubtedly your health and well-being, and those of your company's employees, should come first. However, if you are looking for ways to use time previously filled with travel, face-to-face meetings and court hearings, these are a few ways that in-house counsel can work to improve their existing IP strategy.
Elizabeth Manno Banzhoff and Amanda Tessar are partners at Perkins Coie LLP.
The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.
[1] https://www.uspto.gov/patent/laws-and-regulations/cares-act-faqs.
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