Unlike much of the work that comes to a law department, the patent group has considerable influence over its own workload. I thought about this unusual aspect in the midst of reactivity when I read that “Hitachi Ltd. has boosted profits by pruning its patents. It scaled back its number of patent applications beginning in the early 1990s — and still managed to more than double its licensing income. Before Hitachi files for a patent, the value derived from the innovation must be clearly defined, whether from licensing to earn direct revenue, cross-licensing to obtain critical freedom of action, or to secure strategic alliances or exclusive use in its own products.”
The quote is from the MIT Sloan Mgt. Rev., Vol. 48, Summer 2007 at 16, and value-setting alludes to the fact that internal patent counsel have much say over whether an invention is patentable and how widespread should be the patent protection, both of which decisions bear on workload. In contrast to their brethren in the law department, patent lawyers determine to a large degree whether the company should proceed to apply for patents and how broadly to do so.