Method and apparatus for management of the creation of a patent portfolio

This application claims priority to U.S. provisional patent application Ser. No. 60/929,214, filed 18 Jun. 2007, which application is incorporated herein in its entirety by this reference thereto.

A portion of the disclosure of this patent document contains material which is subject to copyright protection. The copyright owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the Patent Office patent files or records, but otherwise reserves all copyrights whatsoever.

1. Technical Field

The invention generally relates to the field of management tools and, more specifically, to management tools for decision making with respect to intellectual property protection.

2. Description of the Prior Art

The ever growing importance of the protection of intellectual property in the form of patents is well known. It is therefore that individuals and firms spend significant resources for the purpose of actively filing and defending their intellectual property rights. In many cases, a portfolio of protected intellectual property is developed, for example in the form of patents, to protect an entity's interests.

A body of prior art has been developed for the purpose of evaluating patent portfolios and distinguishing valued issued patents from those of lesser importance. Some of the tools allow the scanning of existing databases and determining potential patents that ought to be licensed due to the importance of the patents to a business, or identifying potential licensors of certain types of protected intellectual property. Notably, the prior art concerns intellectual property which has already been filed and is to be handled in one way or another. The prior art does not address a paramount issue that individuals and firms face when in the development stage of a portfolio of protectable intellectual property. Nonetheless, this is a key area in which inventors and business managers alike expend efforts and resources to identify inventions that, when protected, provide the best return on investment.

It would be therefore advantageous to provide a management tool that would allow the easy identification of intellectual property worthy of protection. It would be further advantageous if such a tool could take into account budgetary constraints faced by the user of such a tool. It would be further advantageous if such a tool was simple to use and easily understood, without a need to spend significant time and effort in the process.

Start-up companies, as well as new businesses within established firms, have the challenge of creating a sensible intellectual property (IP) portfolio. With resources usually tight, not all of the IP can be protected due to cost or resource availability considerations. Accordingly, disclosed herein is an apparatus and method that provide an effective solution for management of identified intellectual property. By providing an effective scoring scheme and a simple display, management decision making is made simple and straightforward, while providing in a glance the entire distribution of the firm's IP.

FIG. 1 is a flowchart showing scoring according to the disclosed invention;

FIG. 2 is a matrix display in accordance with the disclosed invention;

FIG. 3 is a block schematic diagram showing a system that implements the disclosed invention;

FIG. 4 shows a first ornamental design of a matrix in accordance with the invention; and

FIG. 5 shows a second ornamental design of a matrix in accordance with the invention.

Start-up companies, as well as new businesses within established firms, have the challenge of creating a sensible intellectual property (IP) portfolio. With resources usually tight, not all of the IP can be protected due to cost or resource availability considerations. Accordingly, an apparatus and method are disclosed that provide an effective solution for management of identified intellectual property. By providing an effective scoring scheme and a simple display, management decision making is made simple and straightforward, while providing in a glance the entire distribution of the firm's IP.

A core to the invention disclosed herein is the selection of a score system that is comprised of at least two different, preferably independent, scores. Each IP portion identified receives such scores and is then handled by the apparatus and/or the method as disclosed herein below. In one embodiment of the disclosed invention two scores may be used. The first score is a score that is respective of the intellectual property worthiness versus other IP known in the art. Such a score can be developed, for example but not by way of limitation, by searching a patent database and finding close prior art, and then assigning a lower value score if a significant amount of prior art is found for the potential portion of intellectual property.

For example, but without limitation, if a scoring system of ‘1’ through ‘5’ is used, then a score of ‘1’ could mean that more than 50 pieces of relevant prior art IP were found, while a score of ‘5’ may mean less than 10 pieces of relevant prior art IP were found. A score of ‘3’ could mean 20-29 pieces of relevant prior art IP were found, and so on.

The second score is a score that is respective of the perceived business value of the potential portion of IP to be protected. Such a score can be developed, for example but not by way of limitation, by assessing the business value of each such IP portion, assigning a higher value score to portions of IP that increase the valuation of a firm and a lower value to portions of IP that merely increase the number of, for example, patents in the firm's portfolio. For example, but without limitation, if a scoring system of ‘A’ through ‘C’ is used, then a score of ‘A’ may be assigned to those portions of IP that significantly increase a firm's valuation, or that another company would purchase the firm just for the fact that it holds such portion of IP. A score of ‘C’ may indicate, for example, patents that have a potential value of up to twice the amount invested in protecting that IP. In one embodiment of the disclosed invention a plurality of scores are provided for each potential portion of IP considered for protection. The scores are then averaged to arrive at the respective first score or the second score. In one embodiment, a weighted average is used giving, for example, a higher weight to business persons providing a business score, and a higher weight on the IP value scores to scores provided by patent experts or technical personnel.

Reference is now made to FIG. 1 where an exemplary and non-limiting flowchart 100 describes the principles of the disclosed invention. In step S 110 , a list of potential portions of intellectual property is provided, each having or being assigned a unique identification. A description of a potential portion of intellectual property may include, a title, an abstract, and other information deemed appropriate. In step S 120 scores, preferably independent scores, are assigned to each portion of intellectual property. The scores may be determined as defined in more detail above. In step S 130 a portion of the scores are selected and arranged for display in a position based on the selected scores. In step S 140 the specific arrangement, for example when two scores are used, a two dimensional matrix is displayed, each axis of the matrix corresponding to one of the scores. If three scores are used, then a cube is shown, each axis of the cube corresponding to one of the scores. In one embodiment of the disclosed invention, a plurality of displays, for example a two-dimensional matrix, are shown in sequence depending on the pairs of scores matched to the portions of identified IP. A person skilled in the art would readily understand that the display is not limited to a screen but would further include printed reports, or any other form of a tangible display of the scores.

Reference is now made to FIG. 2 that shows an exemplary and non-limiting two-dimensional matrix 200 created in accordance with the principles of the disclosed invention. Each of the potential portions of the IP to be protected is identified by a unique identification code, shown herein as ABC- 001 through ABC- 008 . Each of ABC- 001 through ABC- 008 is assigned a first score 210 and a second score 220 , the first score 210 and the second score 220 being in accordance with the example discussed in more detail above. An area 230 may be used to provide additional information as may be necessary. Decision making of, for example, which portion of IP to file for patent protection is now made easy. A diagonal ( 401 ; shown in FIGS. 4 and 5 ) going down from the top of the table towards the right differentiates between those portions of IP that may be protected to those which are not. In one embodiment a second diagonal ( 402 ; shown in FIG. 5 ) to the left of the first diagonal separates those invention that are to be filed as non-provisional patent applications and are located to the right of the first diagonal, from those that are to be filed as provisional patent application and that are between the first and second diagonal, to those where no action is to be taken.

With respect to the non-limiting example of FIG. 2 the first diagonal may pass such that ABC- 001 , ABC- 004 and ABC- 005 are determined to be filed as non-provisional patent applications. The second diagonal is placed such that the portion of IP identified as ABC- 003 , and now between the first diagonal and the second diagonal, is to be filed as a provisional patent application. A manager who may set aside a specific budget for filing patents in a given fiscal year can easily estimate the filing costs at this time. In the example case it would be the average cost of filing a non-provisional patent application times the number of identified portions of IP to the right of the first diagonal plus the average cost for filing a provisional patent application times the number of identified portions of IP that are between the first and second diagonal. A person skilled-in-the-art would readily notice that these should not be viewed as limiting the scope of the invention, as other criteria for each of the scores may be used.

Referring to FIG. 3 , an exemplary and non limiting system 300 , implemented in accordance with principles of the disclosed invention, is shown. The system comprises a central processing unit 310 coupled via a bus 305 to a memory 320 and an input/out (I/O) interface 330 . The memory 320 further comprises a portion of a memory 325 that is used for the purpose of containing the display information displayed in accordance with the disclosed invention. The I/O interface 330 is coupled for example to a display 340 functioning as an output device, a keyboard 350 , functioning as an input device, and a data storage 360 that is used for the purpose of holding the steps of the method executed in accordance with the disclosed invention and that cause the display of, for example, the two dimensional matrix 200 . A storage portion 365 contains the IP list and the scores each of the identified potential IP to be protected received.

With reference to FIGS. 4 and 5 , there are shown examples of two-dimensional matrices that use color schemes to more easily allow the identification of the more valuable portions of intellectual property from those of lesser value. For purposes of FIGS. 4 and 5 , each color is identified by a numeric designator. Hence, those portions of identified IP that reside with green cells ( 410 ) of the matrix of FIG. 4 are of a higher value than those in yellow cells ( 420 ) or red cells ( 430 ). In one embodiment, and as shown in FIG. 5 , different shades of a color may be used, for example different shades of green, indicating that a deeper green ( 410 ) is a more valuable area than a lighter green ( 415 ).

The invention disclosed herein is described with respect to specific exemplary embodiments. Other embodiments are envisioned and should be considered to be part of this invention disclosure. For example, without limitation, a multi-dimensional matrix is specifically envisioned to be part of the disclosed invention, where additional scores are used to characterize the potential portion of IP to be protected. It should be further noted that the inventions herein may be implemented in hardware, software, firmware, or any combination thereof. The display of the matrix or matrices may be provided in a plurality of tangible display forms.

Although the invention is described herein with reference to the preferred embodiment, one skilled in the art will readily appreciate that other applications may be substituted for those set forth herein without departing from the spirit and scope of the present invention. Accordingly, the invention should only be limited by the Claims included below.