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Yet Another Patent Strategy for Licensed Technology

For licensed patent portfolios, a technology may be broken down into two major pieces with some sub-pieces.

The first is a broad patent that includes the overall concept to be licensed. This one may be filed in two stages: a narrow version covering the concept sought to be licensed, but with the claims drafted reasonably narrow so that the patent will issue quickly. This first patent probably will be filed as a non-provisional so that the issued patent can be used for licensing right away. Before this first patent issues, a very broad continuation should be filed so that it can serve as fodder for going after potential infringers during the first years of the licensing deal.

The second set of patents should focus on either improvements to the broad patent above, or required technologies that are developed for implementing the broad patent. This second set of patents should be filed as provisional and as late as possible. By waiting the full year of the provisional before filing the non-provisional, the enabling technologies of the second set of patents may effectively extend the licensing revenue of the overall technology for three to five years past the first set.

As new research in the original technology yields improvements to the basic technology or enabling technologies, additional patents may further lengthen the licensing royalties.

This strategy is appropriate for technologies that have substantial value at the end of their term, as opposed to technologies that may evaporate completely within the effective term of the patent.