Defensive Patentstrategy
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Defensive Patentstrategy

 

April 2020 | | Florenus

With defensive patent strategies, entrepreneurs generally pursue two goals: (1) not violating the property rights of others and (2) avoiding patent infringement lawsuits by competitors. Various global trends require an increasingly strategic use of patents to achieve these goals. This applies in particular to the high-tech markets in the USA, Japan and the EPO countries (38 member states including the 28 EU countries), in which many patents are continuously registered.

 

EPO Statistics 2018
Increasing number of patent filings; Source: EPO Statistics 2018

 

In general, it can be said that the more intense the competition, the more intensively use is made of property rights mechanisms.


Patent races are particularly widespread in dynamic high-tech sectors. Many patents are pending while the technology is at an early stage of development.


However, this strategy also involves a risk that should not be underestimated: Since it is difficult to predict at the beginning - at an early stage of development - whether and if so, which features of the invention will later establish themselves on the market. Therefore, entire patent portfolios can prove to be a bad investment.

 
Against this background, it makes sense to deal with resource-saving defensive patent strategies. In the long term, there are two goals: (1) not to violate the intellectual property rights of other competitors and (2) to avoid patent infringement claims by competitors.

Design-arounds are generally products or processes that have been designed or developed with the intention of circumventing the industrial property rights of third parties.


This reduces the risk of an action for infringement or, in the case of an action that has already taken place, minimizes liability for violations. This strategy requires careful analysis of existing property rights. If you want to register your own patents for the design-arounds, you must also consider the registration process, including previous claims.

 

In most cases, companies have only one option to prevent so-called design-arounds: increasing the protection area. By registering additional patents, the space for the design-around that is free of property rights will be reduced.
Another way to prevent design-arounds is to unsettle the competition:


By labeling products or processes with 'patent-pending' or 'patented', competitors are unsettled. Until the actual publication of the patent (18 months after filing), one can only speculate about the scope of protection.


Accordingly, the competitor runs the risk of continually developing a product or process that ultimately violates the trademark company's property rights. In addition, there is often a certain marketing effect that additionally strengthens the position in the market.