Authored by Elliot C. Cook
Why are patents the single-most valuable asset for some companies, yet for others just a waste of money? Most often, the difference is driven by two distinct activities: deciding what to patent and obtaining a patent for it. Companies that approach both activities strategically are able to unlock the powerful competitive advantages that patents offer. Companies that fail to think strategically about one or both often find themselves investing resources and obtaining no return. Here is what you need to know about patents during both phases.
Deciding What to Patent
Companies must understand the function of patents, which is to exclude, or block, competitors from doing what is claimed in a patent. Owning a patent does not permit a company to do anything. It limits the activity of other companies.
What technologies should be patented? One good rule of thumb is that, if a consumer or competitor will notice it, consider patenting it. Features that catch a consumer’s eye are often those that drive sales. Those that concern competitors may have competitive significance. Both are worth patenting.
By contrast, features that nobody sees are often not valuable to patent. Examples include specific parts of source code, intricacies of an algorithm, confidential processes, and secret formulas. Even if you patent it, how will you know a competitor is infringing the patent?
Obtaining Patent Protection
Claims are what matter most. A patent is a property right, and its claims define the bounds of the property. If a technology is described in a patent, but not claimed, the patent does not block a competitor from practicing the technology. Thus, when drafting claims, cover what it is you want to prevent competitors from doing.
But be careful about claim scope. While broad claims cover more and thus block more, they are also vulnerable to invalidity attacks based on "prior art." Prior art means preexisting technology. You cannot patent the prior art or obvious variations of it. Thus, draft claims broadly enough to ensnare competitors but not so broad as to invite invalidity challenges.
Because claims matter so much, they receive careful scrutiny. Claims that are vague, confusing, or abstract can be found invalid. Avoid claims that are so broad, intangible, or hard to understand, that they cannot be reasonably interpreted or enforced.
Although claims matter most, the description in a patent matters too. If something is claimed, but not adequately described in the patent, the claims may be invalid. When drafting a specification, try to support the claimed technology with multiple variations on how it may be implemented. If a claim recites a "vehicle," the specification should describe a car, train, ship, and perhaps a jet fighter.
All too often, companies approach patenting with zero strategy. These companies usually guarantee themselves a wasted investment. Sophisticated companies approach patents with the same business insight they use in other critical aspects of their operation. They consider the factors discussed above and invest wisely.
Originally printed in IT News on January 7, 2017. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.