Shipulski On Design

Everyone likes patents, but few use them as a business tool.

Patents define rights assigned by governments to inventors (really, the companies they work for) where the assignee has the right to exclude others from practicing the concepts described in the patent claims.  And patent rights are limited to the countries that grant patents.  If you want to get patent rights in a country, you submit your request (application) and run their gauntlet.  Patents are a country-by-country business.

Patents are expensive.  Small companies struggle to justify the expense of filing a single patent and big companies struggle to justify the expense of their portfolio.  All companies want to reduce patent costs.

The patent process starts with invention.  Someone must go to the lab and invent something.  The invention is documented by the inventor (invention disclosure) and the invention is scored by a cross-functional team to decide if it’s worthy of filing.  If deemed worthy, a clearance search is done to see if it’s different from all other patents, all products offered for sale, and all the other literature in the public domain (research papers, publications).   Then, then the patent attorneys work their expensive magic to draft a patent application and file it with the government of choice. And when the rejection arrives, the attorneys do some research, address the examiner’s concerns and submit the paperwork.

Once granted, the fun begins.  The company must keep watch on the marketplace to make sure no one sells products that use the patented technology.  It’s a costly, never-ending battle.  If infringement is suspected, the attorneys exchange documents in a cease-and-desist jousting match.  If there’s no resolution, it’s time to go to court where prosecution work turns up the burn rate to eleven.

To reduce costs, companies try to reduce the price they pay to outside law firms that draft their patents.  It’s a race to the bottom where no one wins.  Outside firms get paid less money per patent and the client gets patents that aren’t as good as they could be.  It’s a best practice, but it’s not best.  Treating patent work as a cost center isn’t right.  Patents are a business tool that help companies make money.

Companies are in business to make money and they do that by selling products for more than the cost to make them.  They set clear business objectives for growth and define the market-customers to fuel that growth.  And the growth is powered by the magic engine of innovation.  Innovation creates products/services that are novel, useful and successful and patents protect them.  That’s what patents do best and that’s how companies should use them.

If you don’t have a lot of time and you want to understand a patent, read the claims.  If you have less time, read the independent claims.  Chris Brown, Ph.D.

Patents are all about claims.  The claims define how the invention is different (novel) from what’s tin the public domain (prior art).  And since innovation starts with different, patents fit nicely within the innovation framework. Instead of trying to reduce patent costs, companies should focus on better claims, because better claims means better patents.  Here are some thoughts on what makes for good claims.

Patent claims should capture the novelty of the invention, but sometimes the words are wrong and the claims don’t cover the invention.   And when that happens, the patent issues but it does not protect the invention – all the downside with none of the upside.  The best way to make sure the claims cover the invention is for the inventor to review the claims before the patent is filed.  This makes for a nice closed-loop process.

When a novel technology has the potential to provide useful benefit to a customer, engineers turn those technologies into prototypes and test them in the lab.  Since engineers are minimum energy creatures and make prototypes for only the technologies that matter, if the patent claims cover the prototype, those are good claims.

When the prototype is developed into a product that is sold in the market and the novel technology covered by the claims is what makes the product successful, those are good claims.

If you were to remove the patented technology from the product and your customer would notice it instantly and become incensed, those are the best claims.

Instead of reducing the cost of patents, create processes to make sure the right claims are created.  Instead of cutting corners, embed your patent attorneys in the technology development process to file patents on the most important, most viable technology.  Instead of handing off invention disclosures to an isolated patent team, get them involved in the corporate planning process so they understand the business objectives and operating plans.  Get your patent attorneys out in the field and let them talk to customers.  That way they’ll know how to spot customer value and write good claims around it.

Patents are an important business tool and should be used that way.  Patents should help your company make money.  But patents aren’t the right solution to all problems.  Patent work can be slow, expensive and uncertain.  A more powerful and more certain approach is a strong investment in understanding the market, ritualistic technology development, solid commercialization and a relentless pursuit of speed.  And the icing on the top – a slathering of good patent claims to protect the most important bits.

Image credit – Matthais Weinberger

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