This morning the Chicago Tribune ran an article (click here for the Tribune’s piece) based upon IFI Patent Intelligence’s ranking of 2007’s top U.S. patent assignees — click here for IFI’s press release. The article focused on Motorola’s movement from number 34 in 2006 to 44 in 2007. Motorola explained that it has shifted focus from a goal of being one of the largest patent assignees to a more limited portfolio focused around Motorola’s core technologies. I was quoted in the story about the value of what I refer to as "strategic patenting":
Motorola’s approach is a more common one across industries, said David Donoghue, special counsel at DLA Piper in Chicago who specializes in intellectual property. In general, most companies are "focusing their patenting efforts on their most important technologies and their biggest innovations — the things that differentiate them from their competitors," Donoghue said.
There is also value in having a large patent portfolio, particularly if you need to use your portfolio for cross-licensing or defensively against a patent-aggressive competitor, or if you are not sure which of your technologies will drive your industry and profits in five or ten years.
Shortly after reading the Tribune article this morning, an IPLaw 360 article caught my attention (click here for the story, subscription required). The article discussed a study by Morgan Lewis attorneys Craig Opperman and Carina Tan (to read the Intellectual Asset Management article about Opperman’s and Tan’s research, click here on Opperman’s biography and click the link to the article in the upper right hand corner of the page).* Opperman and Tan argue that a high volume, low cost (per application) patenting strategy has a greater final cost than a strategic patenting strategy in which a company pays more for each individual application, but files fewer applications clustered around their core technologies. They also offer to provide a spreadsheet proving their analysis to anyone who contacts them and asks for it. It is an interesting premise. Of course, it does not appear to take in to account those companies that have a high volume strategy without unnaturally driving down their patent costs. I think few would argue that, if a company has the resources either in terms of in-house prosecutors or prosecution budget, more high value patents are better than fewer high value patents.
* I would provide you a pdf of the article, but I want to stay on the right side of the copyright laws.