Using IP research to shape Unitary Patent strategy
16 Feb 2023
Companies and law firms have had about a decade to consider the theoretical implications of the Unitary Patent (“UP”). But now that the UP rubber is about to meet the road, they must take a serious look at how they evaluate their own and competitors’ portfolios and implement changes to their filing and IP management strategies that accommodate the new world of the UP.
This article will consider how IP research tools can help you step into the UP landscape with confidence.
An expanding field for IP research
Simply put, more patents in a geographic market means more need for IP research, from freedom-to-operate (“FTO”) to invalidity considerations. “You’re going to have a bigger corpus to search,” notes Peter Vanderheyden, VP, IP Research for IP Services at RWS. “As a result, you’ll find more patents of concern.”
Many companies currently either do not devote resources to FTO or conduct relatively limited searches. Under the UP, an increasing number of patents are likely to be effective in smaller markets that can threaten a company’s broader European rights.
According to Vanderheyden, “This changes the dynamic. If you weren’t doing [FTO] before, you need to reconsider whether you ought to be doing it now, because your risk is going to grow over time. As the UP corpus grows, so does your risk.” Companies that previously limited their patent filings to a relatively minor geographic scope may have been safe with limited FTO searching. The UP will likely change that as new filers enter even the smallest European jurisdictions by way of the UP.
As with FTO research, the scope of invalidity research is set to expand. Whether the overall appetite for litigation in fact does increase, there will be a new pool of potentially invalidating national prior rights applicable to the UP. Because the existence of harmful prior art in a single, smaller European nation can potentially kill the entire UP, the importance of quality invalidity research will become that much more important.
How do I prepare for the Unitary Patent?
Despite the hype building around the UP, only time will tell how quickly and extensively the new system will be embraced.
“We can argue all day about how quickly [UP] is going to take off,” says Vanderheyden. “We don’t know. But as it grows, it’s going to increase risk. So, if you weren’t doing [FTO searching], you’d better start doing it. If you were doing it before, but maybe doing it in a cursory fashion [in-house], now you might want to hire a professional who’s going to do a best-practices oriented FTO search for you.”
Form an IP research plan now to address the anticipated evolution of your company’s or clients’ risk profiles. Regular communication among in-house IP departments, outside counsel, and research service providers will be important as the UP picture continues to evolve. Plan to revisit these conversations on a regular basis after the UP system goes online and over the next few years as practical effects of the new system emerge.
“Whether you’re trying to get a new patent, whether you’re trying to roll out a new technology and you don’t want to get a patent on it, whether you’re being threatened with or concerned about litigation, it’s all about risk management,” says Vanderheyden. “Companies need to have a proactive strategy for all different aspects of risk management, so that they don’t get caught on their heels.”
In broad brushstrokes, consider two divergent approaches to research and eventual UP filing. On one end of the spectrum are those companies with a higher risk tolerance early in the R&D and patenting processes. Such companies may prefer to wait until their patents are actually challenged or they’re accused of infringement to delve deeply into research like invalidity searches. On the other end will be companies that are particularly proactive and will pursue extensive IP research from an early stage. Such companies may be more likely to embrace UP filing when the system comes online.
These hypothetical extremes of doing little, on the one hand, or heavily investing in new strategies from Day 1 of the UP, on the other, are unlikely to be the right fit over time. Instead, every player should create a deliberate and nuanced plan that addresses the needs and risks of their specific business for the long-term, and be ready to adjust as UP data becomes more clear.
In other words, the UP doesn’t mean you need to re-invent the wheel. But it does mean you should evaluate your strategy and processes and make sure they still work in the new regime.
Tools to optimize your UP plan
RWS has a diverse and well-established suite of research tools designed to manage risk, streamline filing processes, and help companies optimize their IP portfolios. Our IP research services and tools for FTO, invalidity, and more are flexible to accommodate your goals and budget while providing the most accurate and comprehensive results for your needs.
RWS IP Services tools include:
- AOP Connect, an IP research platform that organizes, stores, and controls IP research references and prior art with a combination of traditional and crowdsourced research using our global network of IP experts
- Crowdsourcing to ensure the most exhaustive and comprehensive searches when litigation does loom
- Industry-leading translation and filing services that streamline portfolio management whether you’re filing UP or traditional patent applications
- Deeply experienced research project managers who can help you evaluate and adjust your strategies to the new world
With the help of these and other tools, our IP research experts can help your company plan for the UP. Contact us to see how we can help you be ready for the Unitary Patent.
Peter Vanderheyden
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