On 3 June 2025, we held the first webinar in our Pre-Launch Patent Playbook series. Barbara Durling hosted Rike Dekker and Emer Bollinghaus for a discussion on: Aligning Patent Risk Assessment with Your Innovation Development Workflows.
This webinar marked the first in a three-part series. The next session, Search Strategy: Streamlined Approaches to Competitor Risk Identification, will delve into searching strategies and their execution on 17 June. The third instalment, Risk Resolution: Tactical Responses to Patent Obstacles will explore various risk mitigation strategies on 1 July.
Key takeaways
The discussion between Barbara, Rike and Emer highlighted three key takeaways.
Firstly, third-party IP is an inescapable risk factor for your business. Whilst a company's own IP is undeniably important, it does not confer risk-free operation, nor does it guarantee immunity from third-party patent issues.
Secondly, there is a benefit to outcome-oriented IP risk analysis. It is impossible in real terms to ascertain every single IP risk. So, the emphasis should be on identifying how much and what type of risk information you want to invest in acquiring, how much uncertainty you're willing to accept, and, critically, what actions you would contemplate taking, based on the information you acquire.
Finally, a one-size-fits-all approach rarely works. IP risk management strategies should be tailored to the specific business, its development workflow, and its unique risk appetite. This bespoke approach ensures that IP risk assessment actions can be integrated into the product development process. Moreover, it ensures that the insights from risk assessments can be used and acted upon at an appropriate time, in a commercially valuable manner, within your existing workflows.
In this fast response article, we'll delve into the key themes and highlights of the webinar.
The Threat of Third-Party Patents
Organisations often grapple with the complexities of intellectual property (IP) risk, particularly when bringing new products to market.
It is important to remember that patents confer monopoly rights, allowing the patent holder to prevent others from using their patented invention. However, holding a patent for your own invention does not automatically enable you to work your patented invention without infringing someone else's IP rights.
The ramifications of an IP dispute can be far-reaching for any business, regardless of the outcome. Such conflicts can introduce volatility in share prices, derail due diligence processes and spoil mergers and acquisitions, leading to adverse investment outcomes. Business operations may be temporarily halted via preliminary injunctions and the possible need for negotiations and litigation can accrue substantial financial costs and cause significant delays.
In short, IP disputes can postpone planned commercial activities, drain resources, and damage a company's reputation, even if, ultimately, that company is found not to infringe or the third-party patent is found to be invalid. This underscores the importance of assessing and managing third-party patent risks before a new product or service reaches the market, by integrating IP risk assessment into the product development process.
Integrating IP Risk Assessment into the Product Life Cycle
The product development process provides a structured framework for managing IP risk. Whilst specific approaches may vary, and every step will not be appropriate for every product or every business, the general phases offer useful moments for IP scrutiny, as follows:
During the ideation phase, new business areas, market needs and competitive landscapes can be explored. Mapping this information against marketing and competitor intelligence can reveal both potential risks and strategic opportunities for collaboration or acquisition.
As a product progresses into product definition and begins to take shape, a high-level risk assessment can help determine whether adjustments to the product idea are necessary or if there is an available path to market.
In the prototyping phase, with detailed product features now established, a more detailed IP Risk Analysis (historically, known as “Freedom To Operate” (FTO) analysis) becomes appropriate. This may result in a recommendation to make minor design modifications and/or to begin ongoing monitoring of identified patents. It is also highly advisable at this stage to capture your own innovations and apply for patent protection.
The design development phase can accommodate a refresh of initial searches to account for any new features integrated into the product. Reviewing the mitigation plan, assessing the status of relevant patents and considering specific mitigation steps are all worthwhile, during this phase.
The testing and validation phase can involve a second update of initial searches to cover any new features. The risk and mitigation plan require careful review, with a focus on relevant territories and seeking local legal opinions for any "grey zones" where risk remains uncertain.
Finally, at launch, a final check should be performed before the product enters the market. Continuous monitoring of the patent landscape for new grants or abandoned patents also remains a key aspect of ongoing risk management.
Management of Third-Party Patent Risks in Real Terms
While comprehensive knowledge is valuable, it is unrealistic to possess full awareness of all potentially relevant third-party IP, especially because the risk landscape is inherently dynamic. Consequently, an effective IP risk management strategy involves a calculated decision on the extent and type of IP risk assessment to undertake, and its timing.
At Kilburn & Strode, we have found that successful IP risk management achieves a balance between acquiring useful knowledge of third-party IP and accepting the inherent uncertainties. The optimal balance varies for every business, evolving over time and differing across various products within the same organisation. Defining this balance is an area where expert guidance can be invaluable.
Numerous factors influence the chosen approach. Strategic considerations include the underlying purpose of the risk assessment, the willingness to act upon its findings, and the desired or undesired outcomes at product launch.
Other significant factors encompass the technical area, including its typical litigiousness, the competitive landscape, relevant jurisdictions, budget constraints and the organisation's own IP portfolio strength, risk appetite, and timeframes. For example, an optimal approach to IP Risk Assessment can vary hugely, according to technology type – with hardware and software innovations typically lending themselves to different respective approaches, and the long product development cycles in pharma necessitating a different approach to that which usually works well for chemical inventions.
Once an approach is determined, its implementation relies on a deep understanding of the client's business and its product development workflow - something in which we at Kilburn & Strode have particular skill.
Integrating patent risk management into existing processes should enhance operations, not create undue delays or burdens. Making it successful often involves raising overall awareness of IP within an organisation, and of the vital role that IP Risk Management plays in the commercial success of your products. We at Kilburn & Strode can support you to achieve this, and to make IP Risk Assessment an integral and commercially valuable aspect of your product development workflows.