10 Mar Strategies for Effective Patenting… by Dileep P. Rao

Introduction

The first step in deciding what to patent has nothing to do with patents, or the law.  It involves a thorough analysis of your business and a determination of what your goals are.  There are probably very few decisions that are made in business that don’t involve a cost-benefit analysis; obtaining a patent is no different. Patents are assets for your business that could pay huge dividends if properly orchestrated.

Businesses seek patents for numerous strategic reasons, such as protecting foundational technologies and using ownership to strengthen their market position. Odds are that your goals are a hybrid of those two aims.  Analyzing your business and determining your direction will often result in an intelligent and effective approach to building a patent portfolio resulting in a true and viable long-term asset.

What Are Your Objectives for Obtaining Patents?

First of all, patents are assets.  Almost everyone involved in Intellectual Property law says this and believes this.  But, what does it mean?

From a purely legal perspective, a patent grants you a number of rights.  Mainly, these rights allow you to exclude others from making, selling, using, or importing whatever you have patented. For an asset to make business sense, however, you have to decide how to best use it. 

Some key objectives are:

• Excluding Competition – The most obvious method of utilizing a patent is to stop your competitors from making use of the technology.  If a patent can give you a competitive advantage in today’s cutthroat marketplace, it makes solid business sense to be the only player in the market that can use it.  You can have a monopoly on your invention for 20 years from your application date.
• Marketing Tool – Selling a product or service that is patented adds to the perceived value of the product or service.  It indicates to a customer that you are unique, new, and better than the competition.
• Revenue Streams – Patents also allow you to collect licensing fees from other companies.  You can provide all or some of your rights to another for a fee or a royalty. This allows you to enter into markets that would otherwise be closed to you.  

Types of Patents

• Provisional – A provisional patent is essentially a placeholder for your patent application.  You have to disclose all the information necessary to implement your idea, but do not have to claim your specific invention.  You have 1 year from the filing of your provisional patent to either convert it to a utility application, or file a new utility application.
• Utility – Typically, when anyone refers to a patent, they are referring to a utility patent.  This is what contains what you claim as your invention, and determines what subject matter is protected.
• Design – A design patent is purely to protect the appearance, or decorative aspects of a product.

Effectively Meeting Your Objectives

Meeting your objectives requires significant planning and preparation before ever writing the patent application. Your objectives will dictate both how the patent application is drafted, as well as how the patent application is prosecuted after application.

Claiming Strategies for Meeting Objectives

The claims in a patent application are the heart of the application.  They describe the invention and subject matter that you are trying to protect.

• Excluding Competition – If your chief concern is excluding your competitors from using your technology, then the patent is drafted broadly with a large scope of invention. Your goals here are to get the greatest extent of protection for your invention. The patent will be written broadly, but will likely need to be narrowed before it can issue. Care will be taken to try to prevent future technology from making your patent obsolete.  Often the invention will be described generally in order to do this.
• Marketing Tool – If your primary concern is marketing, however, the drafting of the patent will be much narrower in scope. The claims will be specific to your invention and without extra subject matter that is not readily apparent. This will speed prosecution and ease the allowance of the patent.
• Revenue Streams – In order to achieve this goal, the approach will be a hybrid of the above.  You want broad enough coverage to make your product or service attractive to businesses who may want to license it, but not so broad that significant changes need to be made prior to issue.

Prosecution Strategies for Meeting Objectives

Prosecution is the term used to describe the process of getting a patent issued. During the life of your patent application, the United States Patent and Trademark Office (USPTO) will likely issue office actions and rejections. Your main objective will dictate the strategy to follow in responding to these office actions.

• Excluding Competition – The main objective here is to get as large a scope of protection as possible.  So, in keeping with that objective, you will need to fight for every bit of your patent  claims along the way.  Amendments and changes will be kept to a bare minimum and all arguments by the USPTO need to be countered.  This may lead to a prolonged prosecution period and a greater expense for the overall procurement of a patent.
• Marketing Tool – The main objective here is to get a patent, and get it fast.  You don’t want to give the USPTO much to object to or reject. Often, amendments will be liberally made in order for the rapid issuance of a patent.
• Revenue Streams – Again, the approach will be a hybrid of the above.

The strategies above have been discussed in general terms to provide a high level overview to a patenting approach. Contact us so we can tailor a plan to your individual business goals and needs.

Make your Intellectual Property effectively work for you!

Written by Dileep P. Rao, Senior Attorney at KMD Law