How to Develop a Strong Quantum Patent Portfolio (Part 2)

How to Develop a Strong Quantum Patent Portfolio (Part 2)

In part 1 of this series on developing a strong quantum patent portfolio, I discussed considerations related to patentability, collaboration and ownership, and assertion and licensing. In Part 2 I discuss ways to maximize the lifetime of your patents and the importance of enlisting expert guidance as you build an intellectual property strategy for quantum computing innovations.

Extend the Lifetime of Patents

A factor that is somewhat particular to quantum technologies is the time horizon. Because of the groundbreaking nature of much of the science involved, it can take years or even decades to fully realize or monetize quantum inventions. This can mean that a finalized invention design can be a constantly moving target. Still, in the race to patent inventions before competitors swoop in, it can be good to file patent applications as early as possible. Given this inherent tension, there are some tools that should be considered to allow for the longest patent lifetime possible without overinvesting upfront in technologies that might not ultimately prove viable.

One such tool is an international application (sometimes referred to as a “PCT application” after the Patent Cooperation Treaty (PCT)). Instead of first filing a non-provisional patent application with the United States Patent and Trademark Office (USPTO), for example (which is typically picked up for examination by a patent examiner in 12-18 months), an international application acts as a placeholder in most jurisdictions across the globe. While you still must invest in preparing a patent application upfront, you have at least 30 months to ultimately decide whether and in which jurisdictions you would like to file national patent applications. This provides for 2.5 years to see how the technology has progressed internally and/or how much interest has been generated externally before deciding whether to invest significant additional funds in pursuing patent protection.

In addition, on the backend of pursuing patent protection, one could also consider aggressively lobbying for patent term adjustment (PTA) for your patents. PTA is a process in the U.S. of extending the life of a patent beyond the default (20 years from the date of filing) when there are delays in obtaining a patent caused by the USPTO. Because much of a quantum patent’s worth may very well be near the end of its lifetime (e.g., in the year 2040 and beyond for patents filed today), any additional time that can be tacked on at the end of the patent might be of significant value.

Find a Guide to Help You Navigate IP Challenges

Lastly, while it might seem incredibly self-serving and hyperbolic to say so, I believe that the single most important step one can take as a company or individual inventor when developing your quantum portfolio is hiring strong patent counsel. Two of the more important things your patent counsel can do are: (1) assist in the preparation and filing of your patent application(s) and (2) interact with patent examiners on your behalf. A patent counsel can also provide individualized advice relating to the other patent issues too. Note, however that a patent attorney dealing with the quantum world must be both legally knowledgeable and technically knowledgeable.

As with any profession, there are varying degrees of legal savvy among patent practitioners, but the vast majority of patent practitioners will be sufficiently equipped to answer your legal questions. The more important question, in my view, is whether prospective patent counsel has sufficient technical knowledge to represent you. When it comes to quantum technologies, this is far from a given.

For reference, as of July 2023, there are just over 50,000 patent practitioners registered to practice before the USPTO.^[1] This might initially sound like a large number. However, this number includes many practitioners who already work for individual companies as in-house counsel (and, therefore, are not accepting clients). Much more importantly, though, this number also includes practitioners across all technical fields (e.g., biotechnology, chemistry, mechanical engineering, etc.). Depending on your specific quantum technology, you will likely need to find someone who specializes in one or more of the following: optics, semiconductors, algorithms, mathematics, quantum physics, computer architecture, etc. Further, given the underlying quantum-mechanical nature of many inventions in this space, you may reasonably require that your patent counsel has an advanced degree in a relevant field (e.g., mathematics, electrical engineering, physics, computer science, etc.). Unfortunately, there simply is not an overabundance of patent practitioners who meet this criteria.^[2] Still, to the extent possible, try your best to ensure you recruit patent counsel who can readily understand and convey the value of your invention. Getting a patent examiner to digest your invention is difficult enough, you don’t want to have similar challenges with your own attorney.

Prioritize IP Portfolio Strategy

Quantum computing is an exciting and rapidly developing field. To protect the value of your inventions, it’s crucial that you prioritize patent portfolio development and account for the many complexities inherent in the process. Those that make patenting a strategic priority will position themselves to successfully monetize and protect their inventions.

About the author

Andrew Velzen is an associate at intellectual property law firm MBHB. Mr. Velzen draws on a background in electrical engineering to prepare and prosecute patents for clients in the electrical, mechanical and materials, software, and telecommunications industries.

^[1] https://oedci.uspto.gov/OEDCI/practitionerSearchEntry#roster – July 3, 2023 (“Currently, there are 13409 active agents and 36989 active attorneys.”)

^[2] It is difficult to estimate about how many patent practitioners would meet this criteria. However, according to a 2022 McKinsey article (https://www.mckinsey.com/capabilities/mckinsey-digital/our-insights/quantum-computing-funding-remains-strong-but-talent-gap-raises-concern#/), the “number of job postings [in quantum technologies] outstrips qualified talent by as much as three to one.” This highlights the relative dearth of qualified “quantum technology master’s-level graduates,” and this trend is almost assuredly reflected in the number of quantum-savvy patent practitioners who are in the patent bar.