Need Broad Patents Fast? Try This.

By | November 14, 2017

Sieze the day: take your patent allowance!That title got your attention, didn’t it? It was meant to. After another successful round of patent application examinations for several clients in the last year, I thought others would like access to my proven patent acquisition methodology. Certainly, there’s a lot more than I can include in this post, and what is presented here should be considered to be only a high level introduction to my process. Moreover, every client requires focused attention to generate the desired patent protection, and not every business scenario mandates this comprehensive approach. But, for those situations where company leadership determines that strong patent protection is a key to achieving the desired business outcomes from investment in innovative products and technology, this methodology is not only recommended, it is required for success. Put simply, if you do the hard work on the front end as outlined in this post, it is more likely that you will be able to obtain patent protection that “makes it cheaper to go through you than around you.”

1)     Forget about the Invention. Focus on the Customer

The first thing a patent attorney asks a client is “what did you invent?” You know who doesn’t care about your invention? Your customer. It follows that meaningful patent protection must focus on your customer, that is, the problem you are solving for them. Once you have validated that customers will pay for your product, you can expect that your competitors will try to pinch those customers if there is enough profit available to them. If your protection scheme focuses on only the features of your product, that is, “the invention”—as most patents do—your competitors could be able to provide a non-infringing product to your customers that provides the same benefits, likely at a lower price. If you focus protection on the benefits provided by your product–which is the reason your customers buy the product in the first place–your competitors will not be able to provide those same benefits to the consumer without infringing your patent claims. Certainly, the invention (or “product”) matters when confirming your entitlement to broad claims. Focus on obtaining claims that encompass the benefits can nonetheless ensure that the patent protection obtained will cover any and all product variations that provide the customer value proposition. (I write in detail about a highly effective execution of this claiming technique for a familiar consumer product here.)

In addition to generating broader claim scope, this methodology provides the advantage of differentiating the claim language from that used in those prior art references that will invariably be used against your claims. I recently had the satisfying—and exceedingly rare–“first action allowance,” using this “consumer benefit” approach to claim drafting. In granting my client’s broad claims without a single prior art rejection, the examiner listed the references that I teed up in the patent application as not solving the existing customer need along the prior art he found in his search. He wrote in his Office Action something along the lines of “I should be able to reject your claims with all of this prior art in the record, but I can’t, because there is no commonality of language used among these references.” This example shows that when you define your invention in a way that is different from the prior art, it is more likely that your claims will look different than those who came before you. It then follows that an examiner who is following the law will be less inclined to find prior art to reject your claims.

2)     Reframe the Prior art as Generating Opportunity, Not Risk

For innovators like my clients, the absence of solutions in the marketplace presents business opportunities, which they tackle with their development of new products for which the customer will pay. Risks are inherent in any opportunity, but no rational business person will let risk be the sole driver of her business decisions. Likewise, the prior art landscape should be viewed as creating opportunities for generating broad patent protection, not as setting up roadblocks to ownership and legal risk, as is typically the case with the traditional approach to prior art review. When combined with a patent drafting focus on the customer benefits, the prior art landscape can be leveraged to define the broadest available claim scope. This is an abstract and organic process and, as such, it can be rather difficult to define the outcome of a prior art “opportunity analysis” on the front end of the process. Nonetheless, when done competently, the client team can be confident that the claims received are not only broad, but also are drafted to avoid prior art references that, if not considered during the drafting phase, would likely require narrowing amendments to be made during patent examination.

Moreover, use of the prior art landscape to guide the drafting process can have the benefit of enhancing desired business outcomes. To this end, many of my clients’ business strategies include generation of strategic partnerships with or exit into companies that are experts in their industries and technology areas. By using in the patent application language of the incumbents to define their own technology, as is found in the relevant prior art, it is more likely that innovators will generate patent protection that is meaningful to established companies. Using this approach, my clients find that they can align their patent protection in tone and tenor with the product offerings of those companies with which they wish to do business in the future, to make themselves not only more noticeable, but also more credible.

3)     Take the Fast Track to Patent Issuance

There is no way to be coy about it: the USPTO’s TrackOne patent examination process is AWESOME! Lately, I have been receiving first Office Actions in about three months–you read that right: about 3 months. This is in stark contrast to the usual 12, or 24 months or even 5 years (the projected examination time for one of my clients) that are filed under the standard procedure. I find these TrackOne examinations to be more substantive and “thoughtful” than the typical examination issued in the standard examination track. While I’m sure my peers can provide opinions on why this might be the case, I really don’t care because my clients are able to go from application filing to patent issuance in a year or less!

From my vantage point after several successful patent examination events in the last 18 months or so, I know that strategically drafted claims that unambiguously avoid the prior art are typically allowable in TrackOne with minimal amendments and argument. Moreover, the crafting of “non-limiting” dependent claims as back up can provide a fairly painless way to give the examiner back something in response to a rejection. Readers will note that such strategically drafted claims are the intended outcome of steps 1 and 2 above. Hence, it follows that clients who follow my patent acquisition methodology can expect good results in the TrackOne process.

There are also side benefits to going the TrackOne route. First, because your claims are strategically focused, and the examination process is streamlined, there is invariably less attorney effort needed to achieve allowance. I find that this savings from lower attorney costs far outweigh the added fees for TrackOne filing. Second, once a US patent is allowed, you can fast track protection outside of the US, to allow the generation of a global patent portfolio quickly, and at much lower cost than by going the traditional examination route.

Notably, not every patent application merits use of the accelerated process because not every patent is intended to create meaningful business outcomes for the owner. However, for those companies that are creating innovative products that solve significant unmet needs in the marketplace, the available accelerated patent examination processes can better ensure that they obtain patent protection that allows the full value a company’s innovation investment to be realized.

Conclusion

I hope that readers find the above introduction to my patent acquisition methodology illuminating. It is no doubt a departure from status quo patenting approaches, that forms the basis of most patent practice models, including mine in the past. While I cannot guarantee client results, in the last couple of years, my innovation-focused clients have consistently obtained quick allowance of broad clams that provide meaningful protection of business models in a variety of unrelated technology areas by using this 3 step process. This framework is independent of technical subject matter: my clients’ favorable patent examinations have included tracking hardware, construction IT, medical devices, household appliances, and computer vision technology, among others. In fact, the only time this methodology has not resulted in allowance of meaningful patent coverage in less than a year is when the examiner rejected the application for reasons other than prior art, and the claims of that application will be broadly allowable once the technical rejection is overcome.

Lastly, if anyone thinks that the existing patent acquisition processes do not need some tweaking, by all means keep doing what you’re doing. But, those who come to me for assistance don’t do so because they think the traditional patenting process will generate their desired business outcomes. Rather, they believe that there has got to be a better way. I submit that this methodology is a strong start to what I believe are necessary improvements for clients when it comes to acquiring meaningful patent protection.

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