A Guide for Implementing a Patent Strategy

How Inventors, Engineers, Scientists, Entrepreneurs, and Independent Innovators Can Protect Their Intellectual Property

Donald S. Rimai

• Publisher: Wiley-Scrivener
• Year: 2018
• Print ISBN: 9781119407058
• eBook ISBN: 9781119407102
• Edition: 1
• Topic: Law
• Subtopic: Intellectual Property Law
• Index: Law

This book provides a strategic framework for cost efficient engineering of market moving patent portfolios by organizing patent engineering efforts around the problems that innovators solve for their customers and not the technologies developed to solve these problems.

Patents are a vital asset in the modern business world. They allow patent holders to introduce new products in to a market while deterring other market players from simply copying innovative features without making comparable investments in research and development. In years past, a few patents may have provided adequate protection. That is no longer the case. In today's world, it is critical that innovative companies protect the features of their products that give them a competitive advantage with a family or portfolio of patents that are strategically generated to protect the market position of the patent holder. A patent portfolio that deters competitors from introducing competitive products in a timely manner can be worth billions of dollars. Anything less than this is an expensive and possibly fatal distraction. This book provides a strategic framework for cost efficient engineering of patent portfolios that protect your investments in research and development and that extend the market advantages that these investments provide.

The book illustrates the use of the problem centric framework to enable the efficient creation of individual patents and patent portfolios that have significant value in and by themselves and allow a company to control its product market. It also introduces the concept of a patent engineer whose role it is to organize input from legal, business and technical communities and organize portfolios and patents using the problem centric framework.

Chapter 1
Background for Developing and Implementing a Patent Strategy

Why Should You be Seeking Patents?

You are a scientist or an engineer working for a corporation. The technology that you are developing is very exciting and quite novel and the resulting products should allow your company to outcompete its competitors. It does not matter whether your company is a so-called “high tech” firm, whether you are involved in biomechanical technology, life sciences or pharmaceuticals, or the development of more mundane products such as the gears or tools. The issues are the same. Your technological advances need to be protected.

You are an entrepreneur who has invested your life savings, after also obtaining financial backing from principal investors, into your company and are hoping to see the value of your company grow exponentially. You are, of course, worried about foreign companies pirating your products and, because of their lower labor costs and the fact that they have not invested heavily in R&D or in developing the markets, they may be able to produce comparable products at substantially lower cost. You need to prevent that, while increasing the value of your company.

You are an innovator who develops neat and novel products in your garage or basement. You are hoping to make millions of dollars from your innovations by producing and selling the products directly or by convincing an established company to produce these products and pay you royalties. However, your proposed products are so unique that you are worried that another company can simply steal them. After all, they can be easily reverse engineered. Concerns over how to protect your innovations keep you awake at night.

While the three specific scenarios presented here differ in many aspects, there are still underlying similarities. Let us address both the similarities and the differences by first focusing on the scientists, engineers, and other technologists who are employed by companies, as these individuals have certain benefits in obtaining patents.

Why Should an Employed Scientist or Engineer Seek to Obtain Patents?

The obvious issue faced by most scientists and engineers is that they are assigned complicated tasks as part of a project team by their managers. These projects have tight schedules and market windows open and close rapidly and a delay in introducing a product can be very expensive. In addition, scientists and engineers are generally much more proficient at solving technical problems than they are at writing detailed descriptions of the problems they have solved and how they have solved them. This becomes even more pertinent as the resulting documents will be intended for a legal, rather than a technical audience.

Despite the pressures placed on these individuals, there are very good personal reasons for them to pursue the obtaining of patents. The benefits to the employer are similar to those of the entrepreneur and, accordingly, will be addressed in the next section of this chapter. Suffice-it to say is that innovative companies should have good patent portfolios, as discussed in Patent Engineering [1].

In years past, an engineer or scientist might have served one employer throughout a long career. Those days are gone. The average tenure at a company today is approximately five years and scientists and engineers need to constantly think about their next employer. Most of us who have worked in industry have signed nondisclosure agreements whereby, typically, we have agreed not to disclose company information for a specified period of time, typically about two years after leaving the company. This serves the company quite well, but how about the employee who has either been laid off or is seeking better opportunities? What accomplishments can one present to a prospective employer? You simply cannot talk about what you are working on.

However, patent applications 18 months after filing and all patents are public record. They are, in fact, your publication record – a publication record that highlights your skills and accomplishments for everyone to see. Your patents clearly distinguish you from all others against whom you are competing for those coveted career opportunities.

In addition to serving as your publication record, many companies have financial incentives to encourage inventors to file patent applications and obtain patents. If your company has such incentives, this is a way to increase your paycheck.

Having to explain what you have accomplished also makes you take a step back and look at the thoroughness of your work. Have you really solved the problem on which you were working? Are there opportunities to enhance your products? Do you know how your advancements and products compare to those of your competitors? The process of filing quality patent applications and building a patent portfolio that protects your technology forces you to address these issues in a more critical manner than how you may address them otherwise. We have all learned about the “scientific method” whereby, when commencing research in an area, one first does a literature search to learn about what was previously done. This certainly is valuable in today’s competitive world where time pressures require that we work as efficiently as possible. This means that we need to know how others previously tried to solve similar problems and what they learned. It does not do either you or your employer any good to reinvent the square wheel. Moreover, as discussed in Chapter 10 of Patent Engineering [1], it is very important to know whether or not the products that you plan to introduce infringe upon the patents held by others.

Why Should Entrepreneurs and Companies Seek to Build Patent Portfolios?

There is no question that building and maintaining a solid patent portfolio that protects your intellectual property can be both expensive and labor intensive. However, not having a strong patent portfolio can be even more costly and time consuming as competitors try to force you out of business, sue you for infringing their patents, seek injunctions against your company to block the sale of your products, and wring expensive licensing fees out of your revenues.

It should be noted that the term “patent portfolio” has been used extensively. As was discussed in Patent Engineering [1], a single patent, or even a few patents, does not provide the level of protection needed in today’s market. There are often alternative ways of achieving an objective and, in case you choose to enforce your patents against a competitor (often referred to asserting your patents or an assertion), there is great strength in numbers as your competitor’s attorneys will seek to have your patents ruled invalid or irrelevant, claiming that their clients are not, in fact, practicing the technology that you have patented This is far more difficult if your competitor’s attorney has to challenge numerous patents.

In addition, there is marketing value to patents. Although a patent is not a measure of how great a technological advancement is, the fact that a device or process is patented is often used as a marketing tool to entice potential customers to buy your products. And, as will be discussed more fully later in this chapter, a solid patent portfolio can allow your company to have access to the intellectual property owned by others, as well as being able to profit from collecting licensing fees.

Why Should the Independent Innovator Build a Patent Portfolio?

Obviously, the reasons that patent portfolios are valuable to entrepreneurs are also valid for the independent innovator. However, there are reasons that are even more pressing for the individual than for the entrepreneur, assuming that the entrepreneur has already launched a company. The reasons include being able to exclude other, more established companies from simply copying your innovations. Without a proper patent portfolio protecting your advancements, any company which you believe might be interested in producing and marketing your products can simply copy them, perhaps even incorporating some further improvements that may make them more desirable to potential customers. Absent proper patent protection, there is no reason why a company should pay you anything to practice the technology that you so painstakingly advanced.

Moreover, you may be seeking to produce and market your own products. If you are an independent inventor, you probably will have to seek funding from investors. Today, there is a popular television show called Shark Tank, comprising several successful businesspeople who are seeking investment opportunities. Individuals with novel products present their ideas to these businesspeople (known as Sharks), seeking to exchange a percentage of the start-up company in exchange for funding. A common question asked by the businesspeople is “What prevents someone else from simply copying the product?”. On more than one occasion, the individual(s) seeking support were able to show that they had either obtained patent protection or had, at least filed, patent applications. This was one factor considered by the sharks when deciding whether or not to invest.

Certainly, an innovator does not have to be prepared to appear on a TV show. However, potential investors are looking to make money and they want some assurances that the novel products will not simply be copied.

What is a Patent?

Thus far, we have argued that it is important for those advancing technology to obtain patents. We have not yet told the reader what a patent is.

A patent is a legal document that allows the owner of the patent to exclude others from practicing the described invention. It should be noted that a patent does not give the owner the right to practice that invention if that practice infringes on patents held by others or if that patent describes an invention that is illegal. For example, suppose you invent a platform attached to a chair that allows someone sitting in the chair to rest one’s arms on the platform. However, if someone had previously patented the chair without the arms, you cannot produce arm chairs because you will be infringing on the prior patent. However, your patent is still valuable because it would allow you to enter into an agreement with the holder of the chair patent that would allow both of you to produce arm chairs while excluding all others from doing so. This type of agreement is frequently referred to as a cross-licensing agreement and can allow you to gain access to technology that you need in order to commercialize your innovations.

Two things that a patent is not. First, a patent is not the equivalent of an academic award, such as a Nobel Prize, that signifies the importance of an invention. Second, although a technical disclosure describing the background of the problem and the invention, itself, must be included in a patent, a patent is not a technical paper such as might be published in a scientific journal or presented at a technical conference.

Popeil was awarded a patent for a fishing rig [2]. I doubt that many would equate either the significance or technological innovation of this invention with that of the transistor [3]. However, Popeil was a successful businessman who marketed the “Pocket Fisherman”, and it is likely that his patent kept potential competitors out of this area.

Indeed, there are many patents that describe technology of dubious importance, either because the item was ill-conceived to begin with or because the world moved away from needing that technology.

It is interesting to note that neither John Bardeen nor William Shockley, who shared the 1956 Nobel Prize in physics for the development of the transistor with Brattain, legally qualified as inventors on these transistor patents. Alternatively, neither Gerald Pearson [4] nor Robert Gibney [5], both of whom made inventionable contributions to the development of the transistor and worked closely with Brattain, Bardeen, and Shockley, shared the Nobel Prize. Scientific advances and patentability are totally different concepts. What constitutes an invention and who are inventors will be discussed more fully in this book. For now, it should be remembered that, rather than being a scientific document aimed solely at educating readers, a patent is a legal document whose principal role is to establish the rights of the owner of the patent to preclude others from practicing the invention without the permission of the owner. It is important to keep these concepts in mind when developing a patent strategy aimed at generating valuable patent applications.

What is an Invention?

If a patent conveys the right to exclude others from practicing your invention, it is then appropriate to ask what an invention is.

Webster’s New Collegiate Dictionary [6] offers several definitions of the word “invention”. Perhaps their most apropos definition is “a device, contrivance, or process originated after study and experiment”. Indeed, this definition probably captures what most technical people envision as an invention. Unfortunately, it is, in large measure, incorrect as far as patentability. Just as the term “patent” has a specific legal meaning, so does the term “invention” and it is this legal definition of invention that must be used when filing patent applications.

Legally, an invention is a solution to a technical problem that is novel and nonobvious to one of ordinary skill in the art. This definition introduces three terms that now must be defined: 1) novel; 2) nonobvious; and 3) ordinary skill in the art.

Let us first address what is and is not meant by “novel”. The term novel does not simply connote a new product, no matter how useful or innovative, that was put together using known components so that the components function exactly as expected. As an example, let us consider a window screen, invented by John. The patent states that the invention comprises an interwoven mesh of wires or fibers with the spacing between the wires or fibers being between 0.1 and 1.5 mm affixed to an opening. The stated purpose...

Table of contents

• Cover
• Title page
• Copyright page
• Dedication
• Preface
• Acknowledgements
• Chapter 1: Background for Developing and Implementing a Patent Strategy
• Chapter 2: The Structure of a Patent
• Chapter 3: The Path to Obtaining Patents
• Chapter 4: Identifying Patentable Inventions
• Chapter 5: Identifying What Has Yet to Be Invented
• Chapter 6: Prioritizing the Inventions
• Chapter 7: Prioritizing Your Patent Applications
• Chapter 8: Proposing and Writing Claims
• Chapter 9: Conducting Prior Art Searches
• Chapter 10: The Mindsets of Innovators and Attorneys and other Cautionary Notes
• Chapter 11: Reviewing Your Proposed Patent Applications
• Chapter 12: Writing Your Patent Applications
• Chapter 13: The Next Step: Prosecution of Your Patent Application
• Chapter 14: What Next?
• Chapter 15: Final Thoughts
• Appendix 1: Electrophotography: Building a Patent Portfolio in a Mature but Evolving Field
• Index
• End User License Agreement