Friend or foe? The effects of patent attorney use on filing strategyvis-a-visthe effects of firm experience

Abstract

Purpose In the intellectual property (IP) and management literature, the question of how external patent attorneys impact patent filings has been understudied. The purpose of this paper is to advance this area of research by examining how the use of external patent attorneys influences the patent filing strategies of firms and what impact firms’ level of experience with the exclusive use of in-house resources has on filing strategies. This study, thus, provides insights into the strategic dimension behind patent filing, a process which is affected by patent attorneys’ work and decision-making processes. Design/methodology/approach The econometric analysis is based on a patent database of 922,553 patents which is combined with an EPO patent database covering applications from 1990 to 2010. The authors test the hypotheses for this study using patent indicators addressing the impact of in-house firm experience vs the use of external patent attorneys on firm’s filing strategy. Findings This research finds empirical evidence that external patent attorneys’ work has an effect on patent scope, international scope, and patenting speed. Moreover, it can be shown that external patent attorneys have a positive impact on most filing dimensions, such as patent scope, international scope and the Patent Cooperation Treaty option, whereas the level of in-house firm experience has a negative impact on most filing dimensions. This implies that external patent attorneys seem to pursue a “maximization approach” while experienced firms seem to pursue a more differentiated approach to filing patents, for instance, drafting narrower and more focused patents. Practical implications The study suggests that effective filing strategies require an integrated approach between diverse IP stakeholders. More particularly, filing strategies should be communicated and aligned between all actors, including external patent attorneys in order to achieve the targeted patenting output. Originality/value The current study develops a patent filing typology, which accounts for patent attorneys’ decision options. In providing insights into patent attorneys’ work and their impacts on intellectual property rights management, the study is a useful complement to prior research, which has predominantly focused on applicants or examiners.

Study on the various intellectual property management strategies used and implemented by ICT firms for business intelligence

“…Extracting value from the owned intellectual property Amongst various IP rights, trade secrets, copyrights and patents can be used for protection in the ICT domain, especially for the software; however, patents are the preferred choice of firms as they provide stronger protection for the functionality of a product, the process of service (Shaikh & Londhe, 2016). Patent filing strategies can be to secure, enforce, exploit, or block, which depends on the level of innovativeness of the inventions (Süzeroğlu-Melchiors et al, 2017). Hence, patenting decisions are seen as important strategic considerations.…”

“…The use or threatened use of litigation helps a firm to protect its IP and at the same time gain competitive advantage (Rudy & Black, 2018) by enforcements with a desire to take out competition, encourage infringers to stop using patented inventions, pay higher royalties, or to build a fierce reputation (Somaya, 2012). Firms also make use of external attorneys to file patents while following a "maximization approach," resulting in more claims, filing in more countries, and more PCT applications (Süzeroğlu-Melchiors et al, 2017). Exercising market powers through litigation is high in the software industry compared to other sectors.…”

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“…Patent filing strategies can be to secure, enforce, exploit, or block, which depends on the level of innovativeness of the inventions (Süzeroğlu-Melchiors et al, 2017). Hence, patenting decisions are seen as important strategic considerations.…”

“…Firms with active and systematic patent management outperform those that remain inactive and non-strategic (Soranzo et al, 2017) Protection of IP does not happen automatically and may require active measures to enforce IP rights and at the same time, defend and preserve those (Spruson & Ferguson, 2007). Patent filing strategies can be used to secure, enforce, exploit, or block competition, depending on the level of innovativeness of the inventions (Süzeroğlu-Melchiors et al, 2017). Firms that remain inactive and non-strategic for patent management are outperformed by firms that have an active and systematic patent management system in place (Soranzo et al, 2017).…”

“…Without appropriate strategies, firms that are not patenting will be unable to capitalize on their investments, and researchers may be prevented from conducting even the most basic research (Clarkson & Dekorte, 2006). Hence, the role of patent management has changed from creating a purely legal barrier for competitors to a sophisticated utilization of patents to achieve maximum returns on innovation (Süzeroğlu-Melchiors et al, 2017).…”