Strategic patenting for many means creating and claiming intellectual property in targeted areas that are intended to create future industry recognized value. The early leaders in this field were Jim O’Shaughnessy at Rockwell and John Cronin at IBM. What they found is that by thinking about what the future might hold, they could invent today products that would exist in that future state. By doing so before other companies, they could create and stakeout an intellectual property position that would exclude others from entering that future space. Alternatively, the intellectual property so created could be licensed to create a revenue stream for the patent holder.

The objectives for most companies are to strengthen their patent portfolios by identifying invention opportunities in emerging parts of the market and discover needed technology developments. The objective is also to generate and claim inventions strategically located right in the middle of emerging future environments. This has proven an effective strategy for many industries including semi-conductors, memory chips, electric motors, modems, instrumentation and controls, automotive systems, consumer electronics, network technologies, wireless technologies, fiber-optic technologies, and electronic business methods.

The process is relatively simple and usually involves a First Step Workshop wherein a variety of individuals with multiple backgrounds brainstorm about a future state. In the Opportunity Identification workshop various scenarios of future states are developed and documented by the participants. The purpose is to clarify future market and technology assumptions. In these future states products and service concepts are brainstormed that consumers would find advantageous to use. These are called Opportunity Statements. What oftentimes also develop are proprietary end-user insights related to market discovery. Drawing on our previous discussion of Product Functionality, product functionality descriptions are often useful in identifying the products and services needed in the future. Thus the first step identifies and documents as Opportunity Statements those products and service concepts that would be valuable in a future business environment.

A useful tool for thinking about new products is a Hierarchy of Invention Framework as shown in the figure. A framework like this is used to deconstruct an innovation. It illustrates how different invention systems and elements are integrated to provide solutions to market needs. The Hierarchy of Invention Framework deconstructs a device into three aspects: functions, systems, and components. These device elements are then linked to attributes (or specifications) and relevant applications (markets served). The performance attributes form the base of the hierarchy and the applications are shown at the top of the framework. This framework is especially useful for academic research teams and technology transfer offices. It helps them visualize relationships between chemical entities or device structures, the market attributes that link to its specification(s), and potential market applications. (Note that the market attributes are equivalent to “Product Functions” used in the Technology/Product Function/Market Matrix described in Chapter 7).

The Second Step is comprised of Innovation Workshops focused on creating specific products that would exist for those Opportunities. These typically utilize the technical innovation processes defined in earlier chapters by taking the product functionality, products, and services identified in the first step and diving into how those products and services could be created. This is done from each a scientific and engineering standpoint, manufacturing standpoint, as well as a distribution and servicing standpoint. Because this work is related to the future, new-to-the-world unique and non-obvious innovations occur and are uncovered by the workshop participants. These unique innovations are then carried forward to Step Three.

Step Three involves the disclosure of the ideas in a form that would be useful for patent applications. Often before commencing directly upon drafting patent applications the ideas are first prioritized in terms of their likelihood of occurrence and economic impact / return on investment.

Companies engaging in this type of work usually found multiple invention disclosures were created, about 15 to 25 per workshop. Some prolific groups end up generating as many as 100 to 200 invention disclosures. In addition, strategic opportunities for the company are identified. This allows their competitive intelligence units to focus on clues as to which strategic opportunities are truly unfolding. This is important because as one starts to create patent applications, the corporation pursues only those applications for which the future scenario utilizing them is occurring. For those future scenarios which are not occurring, the pending patent applications are abandoned. This ensures that the patents are aligned with the strategic interests of the company.

At this point it should be noted that an IP strategy should include an element of trickery. By this John Cronin means a careful planned method: a stratagem towards a goal. He uses a word stratagem to mean trick of war for deceiving and outwitting the enemy, a clever trick or scheme for gaining an end, or skill using ruses. This is because strong IP strategy, in looking at the future and thinking about how competitors are going to respond to it, can be used to deceive by the patent and other intellectual property assets, a company’s true motives.

The “What Companies Do With Assets Created From Strategic Patenting Exercises” figure shows what companies intend to do with the assets that are created. This is taken from Lee Murrah at Meritor Automotive Incorporated. For most for-profit large organizations with an existing business, this exercise preserves for them future sustainable advantaged positions in their market segments.

There are some organizations, notably small and medium-size enterprises that come up with a large number of applications that are outside the scope of their business, and thus make good prospective licensing out options for additional corporate revenue or value upon sale of a small entity. It’s noted in this diagram there are retrospective patents, that is those that are really focused on near-term states. These patents are really about protecting simple variations of current products or services and thus preventing them from being copied by others.