Redesigning patent management process: an Action Research study

The purpose of this paper is to describe how the patent planning and patent evaluation processes might be redesigned for firms intending to move from a mere accumulation of patents to a more thoughtful patent management approach that couples protection with the reduction of cost related to patent file and maintenance.

An Action Research project was carried out in close collaboration with a firm. This approach was adopted since it allows generation of new scientific knowledge from the observation and direct intervention on a specific situation.

Results underline the importance of structuring and formalising the patent planning and patent evaluation processes within the firm. Moreover, it is suggested that the patent planning process should be integrated into the development of a new product/technology since its initial phases.

The paper contributes to filling the gap regarding the practical implementation and improvement of patent planning and patent evaluation processes, coupling protection with the minimisation of costs related to patent file and maintenance. However, as the results of Action Research studies are specific to the context where they took place, result generalisability is limited.

This paper provides managers with a valuable example on how to structure the patent planning and patent evaluation processes. The introduction of specific analyses into these processes allows limiting the decision-making subjectivity and, consequently, enhances the accuracy of firm investment in filing and maintaining its patents.

Providing a practical example of the actual implementation and improvement of the patent planning and patent evaluation processes, this paper responds to the recent call for more qualitative studies on intellectual property management.