Focus of generic pharmaceutical company is mainly on navigating the innovator’s intellectual property and not necessarily on developing a patentable product. Products are developed irrespective of whether they are patentable or not. Once developed (or development strategy is finalized), it is reviewed, and a patent application is filed.
Here the value of patent/application primarily lies in creating freedom to operate or covering the space left by the innovator. It also helps in dissuading the competition to use the same process or composition. Generally, such patents are narrow in scope and filed & maintained only in countries of business interest.
However, for a differentiated product or a new technology, preference is to invest in areas which are aligned with the business strategy and are patentable. Several patent applications each covering a different broader aspect of the product/technology are filed at early stage of development. And later when product/technology is finalized, the patent applications covering the specific aspects are filed. The geographical coverage is also routinely kept broader in the beginning.
Here the value of patent/application lies in protecting the technology early on, keeping the patent applications broader till the clarity on final technology or product emerges. As the aim is recouping the investment on R&D by preventing the competition.
Whatever is the primary reason of filing the patent application, it is important to review the patent portfolio periodically, ideally every quarter to keep it relevant. The regular patent portfolio review meetings should have the right stakeholders from R&D, portfolio, business development, sales & marketing, and IP. Inputs of all these teams are crucial in making the right decision.
The decisions around, conversion of provisional application into complete filing, PCT vs. complete patent filing in specific geographies, entry into National phase in a specific geography, abandonment or continuation of patent prosecution, keeping the patent applications pending, filing of continuation application, and maintenance of the patent etc., should be taken dispassionately. When making a choice do not look at past investment, as that is over, consider whether the patent/application is going to be useful in the future or not.
The patent portfolio decisions should consider the market changes, business interest, business value, strength of the patent, enforcement possibility and the purpose that application/patent serves & the value it brings. The aim is to keep the patent portfolio aligned with the business strategy & dynamic market scenario.
The opposite of “more” is not “less”, the opposite of more is better…….