Do You Need a Patent Review Committee?

As more companies view their intellectual property as a core asset, the patent application process increasingly involves a variety of stakeholders, from legal to marketing to finance. Some larger organizations are formalizing this cross-functional collaboration by forming a patent review committee, which is tasked with prioritizing IP investments.

Patent application decisions are traditionally made by a chief patent or chief legal counsel. While these professionals know the ins and outs of patent law and the patent application process, collaborating with technical or domain experts can help them make more informed decisions about which inventions are worth protecting through the patent process.

At many organizations, this collaboration is done informally, but creating a more formal review committee can enhance the IP portfolio management process. At its core, a patent review committee can get different parts of the company talking to each other and thinking about the role that intellectual property and continuous innovation plays in the health and growth of the business.

Review committees are typically comprised of representatives from legal, R&D, marketing, engineering, and finance. Larger organizations may also include representatives from each product line or technology vertical. The committee’s main job is to review R&D innovations and other intellectual property to determine which inventions should be filed as patents, which should be kept as trade secrets, or which should be published into the prior art domain, providing freedom to practice while prohibiting others from seeking similar patents.

Some committees might go so far as to create scorecards for submissions, ranking them on criteria such as technical or legal strength, economic value, or potential competitive advantage. The committee may also consider whether the ease in which the company could detect infringement of the invention. A piece of code inside of a chip, for example, is difficult to protect against infringers, so it may be better to keep the code as a trade secret.

Patent counsels generally have limited budgets and, given the cost of securing and maintaining a patent, it’s important to invest in patents that will provide the best return to the business. There’s no way to come up with a foolproof process for identifying winners and losers, but a formal review committee can help.