This article, by Francis Hagel, first appeared in Intellectual Property Magazine. It provides strong guidance, in checklist form, for those seeking to beat the odds that the patents they obtain will actually generate strategic value. Mr. Hagel is an IP strategy advisor from France. The article is reproduced with permission. "Suggestions for strategic drafting of patent applications" In the drafting of a patent application, a practitioner starts from a blank page[i]. He/she enjoys the greatest freedom for shaping its content on the basis of the information at hand concerning the invention, its context and the prior art of interest, within the constraints set forth by patent law in the country of filing, keeping in mind the specifics of patent law in the major markets for the invention. This freedom applies to all parts of the application : definition of the
The data coming out of the district courts and the USPTO make it fairly apparent that the "Software Patent Apocalypse" may be here, at least for the foreseeable future. This result has been widely predicted since the US Supreme Court decided Alice Corp. Pty. Ltd. v. CLS Bank International earlier in 2014, but facts now are coming out to demonstrate that the next few years will be tough for those who seek to obtain patent protection for inventions that fall into the realm of software.
We saw initial data from the district courts a couple of months ago when Timothy Lee of Vox.com presented data showing that a number of software patents had been found invalid as failing to claim patentable subject matter (a "Section 101 rejection" to us patent types) under the Alice rationale in
The Takeaway: In the 4th post in this Strategic Patenting Series, a case study is presented of a company that created durable market-making patent protection for a successful consumer product innovation using a disciplined patenting strategy. The strategic patenting efforts of Procter & Gamble undertook with its market-leading Swiffer Wet Jet® floor cleaning system allowed the company to create strong protection of the function of the basic product. This, in turn, resulted in protection of the underlying consumer benefits provided by this innovative floor cleaning system, a fact that allowed the company to prevent functional aspects of its system from being included in knock-off products. Moveover, P&G leveraged its ongoing consumer insights to continue to grow its patent portfolio. In short, the company's successful strategic patenting efforts have "made it cheaper to go through them than around them," thus contributing to its market leadership for this innovation for the past
The Take Away: Those seeking to generate market-making patent coverage for new innovations must recognize that patent coverage should focus not on how the problem is solved but instead on the benefits provided to the customer. Most patent coverage is directed to a specific solution to a customer need that is characterized in the form of an invention. Patents that cover only one solution to a broad customer need will permit competitors to solve the same customer need with a non-infringing substitute product, thus leaving the patent holder with no legal recourse against their competitor. On the other hand, market-making patent coverage focuses on the benefits provided to the customer, which means that competitors cannot sell the same benefit. Accordingly, patent coverage that emphasizes benefits over features will make it more difficult for competitors to provide the same solution to the customer. Innovators must
From the last post, we see that it is very rare for patents to create value for their owners. Moreover, if the "big guys" with pockets deep enough to hire the best lawyers can get it right only 5% of the time, there should be no doubt that smaller companies and individuals should re-examine the advice they are getting from their IP counsel. This is not to say that smaller companies and individuals cannot be successful in creating market-defining patent protection. To the contrary, it is my strong belief that small companies can create solid patent protection at a reasonable cost, but to do so will likely require patentees to recognize that their IP counsel likely has no clue how to do what you need done. And, even if she does, it is not her job to make
Many business people are surprised to find out that all patents are not created equal. A recent study of Fortune 500 companies reported in Suzanne Harrison's Edison in the Boardroom Revisited indicates that only a very small number of patents--namely, 5%-- obtained by these top patent filers created strategic value for their owners. If only 5% of the most sophisticated companies, all of which have veritable armies of patent professionals on their teams, can get patent protection right, it must follow that less resource-rich companies have an even lower probability of gaining strategically valuable patent protection. This and the next few blog posts will aim to help improve the odds for business people seeking to learn how to generate more valuable patents. The first issue to clear up is what "strategic patenting" means. Those of us in the IP Strategy business define a "strategic patent"
As an IP Strategy advisor, I am often asked by the leadership of startup companies what the return on investment is from patenting. While I can confidently provide recommendations as an expert, my opinions are anecdotal based on my almost 20 years experience as an IP professional. Certainly, I have advised a number of startup companies over the years for which comprehensive patent coverage was critical to financial and market success. On the other hand, I have advised a much larger number of startup companies over the years where patenting made little difference to their fortunes. The subjective nature of IP advice holds for other patent professionals. Our respective years of experience results in tacit knowledge that becomes "expertise." This expertise guides clients to us for advice and allows them to trust in our counsel. Missing from my knowledge
While postings have not been frequent in 2013, I have nonetheless been very busy with my IP Strategy counseling and speaking engagements. In 2014, I will commit to being much more diligent in updating my blog with relevant content for those seeking to use IP and intangible asset strategy to create and maximize business value. In the meantime, here is the deck from IP Strategy Overview I presented at a conference of innovators at Georgia Tech's College of Architecture in October 2013. The summary is below the presentation. (To view the Slideshare presentation you view the full post in IP Asset Maximizer Blog.) This deck includes the basic overview of IP (patents, copyrights, trademarks, trade secrets). However, this presentation goes beyond the usual lawyer-generated content to highlight not only the positive business aspects of IP, but also to give a reality check as to the likely ROI of investment in protection.
(NOTE: At the end of this post is a detailed spreadsheet that lists the free and low cost tools that I use regularly in my IP strategy practice. At the request of a group of IP strategy professionals with whom I network, I will be giving a presentation on these tools at a local event. I thought that readers of this blog would also appreciate learning about how these tools can add high value at a low to minimal cost.) In private conversations, some of my corporate peers inform me that they pay $1000's per year (or even per quarter for larger companies) for access to "name brand" patent search tools that nonetheless do not contain accurate and up to date information. For example, a client tells me that one of these expensive tools fails to update USPTO records on
Please indulge me as I pat myself on the back-- Largely as a result of the efforts that I have put into this blog over the last 5 + years and of the resulting recognition of my expertise by my peers, I have again been named to the Intellectual Asset Magazine Strategy 300. This award acknowledges my expertise in IP Strategy and Intellectual Asset Management and is given only to those people who actively practice in areas related to capturing and leveraging business value from IP and intangible assets. Although I have been included on the list in each of the previous years of the award's existence, inclusion on the list is particularly satisfying this year. Specifically, the 2013 list was compiled from scratch as the result of substantive original research from the staff at IAM. I did not pay to be included. (More on the methodology here.) Recognition