The Strategy Toolbox

Researchers and technology managers may not deal with IP every day like IP professionals do, but they are still exposed to all sorts of patent strategy tools, especially when they are attempting to develop a patent strategy for a business. The advertisements for these tools typically imply that life would be so much simpler if only they used the vendor's latest and greatest tool. Many of these tools are very useful; however, most tools also have limitations. Having a framework from which to evaluate these tools is therefore helpful to researchers and managers.

To help develop strategies, there are tools such as books on patent strategy, Web sites and computer software, and obviously, newsletters such as this one. The usefulness of these tools varies widely, based on the experience of the person using the tool and what “job” the person is trying to accomplish. For example, many books are written for the novice independent inventor and are therefore written on a very basic level, the concept of strategy being primarily how to obtain an enforceable patent. On the other hand, many newsletter articles are written for IP professionals and contain much more advanced advice. This advice may be excellent, but also may be too narrowly focused, such as covering some legal exception or nuance, to be incorporated into a broad patent strategy for a particular business.

The question then is how can these tools, supposedly all devoted to patent strategy, be organized so that researchers or managers can decide if the tools will be useful in developing an overall patent strategy for their business? Obviously, to construct the correct strategy, appropriate tools are needed. It is useful, therefore, to think about putting the tools that are the most needed into a “Strategy Toolbox.” Just like an amateur woodworker and a master carpenter may have some of the same tools, two different businesses may use some of the same strategy tools when obtaining their IP. However, just like the master carpenter has additional tools for use in specialized situations, one business may find the need for more complicated or sophisticated strategy tools in its toolbox.

Before selecting the actual tools that are needed and constructing the toolbox, it is best to first consider what is meant by “developing a strategy” for the particular situation. The strategy can be a plan of action or a statement of principles, and can be as detailed or as sketchy as preferred. However, one has to start somewhere, so here we will take the basic view that an IP strategy is a statement of how to get from the current IP state to some future IP state.

With that concept out of the way, the toolbox can be built. The basic toolbox will have three primary compartments, representing the questions: 1) What you are going to do? 2) Why are you going to do it? and 3) How are you going to do it?

The 'What?' Compartment

This compartment has the tools that help determine what can be done to improve an IP position. Unfortunately, it's probably not going to have any tools that will instruct someone as to exactly what needs to be invented. However, this compartment will have the tools that help determine the current state of the art in a technology area. One such “traditional” tool is some sort of access to an online patent database. This tool, through the use of selective searches, gives an understanding of what is known in the area.

However, this traditional tool can now be augmented with more modern data manipulation and analysis software tools that can, for example, search the patent art and automatically separate the patents that are found into various related categories. Some versions of this type of tool can generate a graphical representation of the found information or “map” the technology area and give an idea of what the current patent landscape looks like, where possible holes are, and where competitors have placed emphasis. These tools may also imply that certain patents are more valuable than others, but all of these tools require knowledgeable researchers or patent liaisons to help interpret what information is generated.

The 'Why?' Compartment

This compartment will typically have tools that help determine whether or not certain actions will make economic sense. Why?-type questions almost always come down to economic considerations. Regardless of what the IP strategy deals with, it all relates back to something that will make a business better off financially or it shouldn't be done. So the tools in this compartment will be those that deal primarily with the valuation of intellectual property, or estimate the cost of obtaining and maintaining intellectual property.

The 'How?' Compartment

This compartment is the largest in the toolbox and contains tools that help solve specific problems related to the strategy. For example, once a researcher has decided to do research in a particular technology area after using the “What” tools, the “How” tools can help the researcher get the actual details of the inventions and any research that has been previously done. So, the “How?” compartment contains the tools for obtaining the primary sources of research info, such as patents and literature references.

This compartment also contains legal tools for solving particular legal problems. These tools are typically the knowledge of patent attorneys and strategists that has been captured in the form of books and magazine and newsletter articles. The “How” compartment can also include reference guidebooks and other captured experiences that can help one think more clearly when he or she has to deal with a specific strategic problem.

Other Compartments

One may ask why aren't there “Who?” and “When?” compartments in the toolbox. These issues typically don't require many tools and instead tend to be imposed onto the strategy. The “Who” tends to be a company's employees or others that are hired to implement the strategy. The “When” tends to be dictated by business situation or the desires of management and is typically “as soon as possible.” Therefore once you know what you want to do, why you want to do it, and how you want to do it, then it follows that “Who?” and “When?” can be determined, even if some iteration is needed.

With the Strategy Toolbox framework in place, new tools can be evaluated by researchers and technology managers with the understanding that one particular tool can generally upgrade only one compartment in the toolbox. If the tool is more appropriate for the business or does a better job with some task, it can be added to the toolbox. Just like when shopping for wood-working tools at a home center, a new saw with its new features can be examined and if those features are important and the price is appropriate, the new saw goes in the toolbox, replacing the old saw. The Strategy Toolbox analogy, however, helps to temper any expectations that one new tool will be able to do all the work in developing a patent strategy for a business. In so doing, it maintains the understanding that developing a strategy remains an activity best done by using the collective experience and knowledge of informed researchers, managers, and IP professionals.

Researchers and technology managers may not deal with IP every day like IP professionals do, but they are still exposed to all sorts of patent strategy tools, especially when they are attempting to develop a patent strategy for a business. The advertisements for these tools typically imply that life would be so much simpler if only they used the vendor's latest and greatest tool. Many of these tools are very useful; however, most tools also have limitations. Having a framework from which to evaluate these tools is therefore helpful to researchers and managers.

To help develop strategies, there are tools such as books on patent strategy, Web sites and computer software, and obviously, newsletters such as this one. The usefulness of these tools varies widely, based on the experience of the person using the tool and what “job” the person is trying to accomplish. For example, many books are written for the novice independent inventor and are therefore written on a very basic level, the concept of strategy being primarily how to obtain an enforceable patent. On the other hand, many newsletter articles are written for IP professionals and contain much more advanced advice. This advice may be excellent, but also may be too narrowly focused, such as covering some legal exception or nuance, to be incorporated into a broad patent strategy for a particular business.

The question then is how can these tools, supposedly all devoted to patent strategy, be organized so that researchers or managers can decide if the tools will be useful in developing an overall patent strategy for their business? Obviously, to construct the correct strategy, appropriate tools are needed. It is useful, therefore, to think about putting the tools that are the most needed into a “Strategy Toolbox.” Just like an amateur woodworker and a master carpenter may have some of the same tools, two different businesses may use some of the same strategy tools when obtaining their IP. However, just like the master carpenter has additional tools for use in specialized situations, one business may find the need for more complicated or sophisticated strategy tools in its toolbox.

Before selecting the actual tools that are needed and constructing the toolbox, it is best to first consider what is meant by “developing a strategy” for the particular situation. The strategy can be a plan of action or a statement of principles, and can be as detailed or as sketchy as preferred. However, one has to start somewhere, so here we will take the basic view that an IP strategy is a statement of how to get from the current IP state to some future IP state.

With that concept out of the way, the toolbox can be built. The basic toolbox will have three primary compartments, representing the questions: 1) What you are going to do? 2) Why are you going to do it? and 3) How are you going to do it?

The 'What?' Compartment

This compartment has the tools that help determine what can be done to improve an IP position. Unfortunately, it's probably not going to have any tools that will instruct someone as to exactly what needs to be invented. However, this compartment will have the tools that help determine the current state of the art in a technology area. One such “traditional” tool is some sort of access to an online patent database. This tool, through the use of selective searches, gives an understanding of what is known in the area.

However, this traditional tool can now be augmented with more modern data manipulation and analysis software tools that can, for example, search the patent art and automatically separate the patents that are found into various related categories. Some versions of this type of tool can generate a graphical representation of the found information or “map” the technology area and give an idea of what the current patent landscape looks like, where possible holes are, and where competitors have placed emphasis. These tools may also imply that certain patents are more valuable than others, but all of these tools require knowledgeable researchers or patent liaisons to help interpret what information is generated.

The 'Why?' Compartment

This compartment will typically have tools that help determine whether or not certain actions will make economic sense. Why?-type questions almost always come down to economic considerations. Regardless of what the IP strategy deals with, it all relates back to something that will make a business better off financially or it shouldn't be done. So the tools in this compartment will be those that deal primarily with the valuation of intellectual property, or estimate the cost of obtaining and maintaining intellectual property.

The 'How?' Compartment

This compartment is the largest in the toolbox and contains tools that help solve specific problems related to the strategy. For example, once a researcher has decided to do research in a particular technology area after using the “What” tools, the “How” tools can help the researcher get the actual details of the inventions and any research that has been previously done. So, the “How?” compartment contains the tools for obtaining the primary sources of research info, such as patents and literature references.

This compartment also contains legal tools for solving particular legal problems. These tools are typically the knowledge of patent attorneys and strategists that has been captured in the form of books and magazine and newsletter articles. The “How” compartment can also include reference guidebooks and other captured experiences that can help one think more clearly when he or she has to deal with a specific strategic problem.

Other Compartments

One may ask why aren't there “Who?” and “When?” compartments in the toolbox. These issues typically don't require many tools and instead tend to be imposed onto the strategy. The “Who” tends to be a company's employees or others that are hired to implement the strategy. The “When” tends to be dictated by business situation or the desires of management and is typically “as soon as possible.” Therefore once you know what you want to do, why you want to do it, and how you want to do it, then it follows that “Who?” and “When?” can be determined, even if some iteration is needed.

With the Strategy Toolbox framework in place, new tools can be evaluated by researchers and technology managers with the understanding that one particular tool can generally upgrade only one compartment in the toolbox. If the tool is more appropriate for the business or does a better job with some task, it can be added to the toolbox. Just like when shopping for wood-working tools at a home center, a new saw with its new features can be examined and if those features are important and the price is appropriate, the new saw goes in the toolbox, replacing the old saw. The Strategy Toolbox analogy, however, helps to temper any expectations that one new tool will be able to do all the work in developing a patent strategy for a business. In so doing, it maintains the understanding that developing a strategy remains an activity best done by using the collective experience and knowledge of informed researchers, managers, and IP professionals.