Anything Under the Sun Made by Man

Many entrepreneurs and business owners want patents that will defend their company against competitors, but few companies actually have a proactive plan for investing their patent assets wisely.

To defend your company, you want patents that are (1) litigation worthy and (2) relate directly to your company’s products and services.

Litigation worthy patents are not the garden variety patents that you get from your local patent attorney. The primary goal of the litigation worthy patent is to get a good examination. This means presenting the invention clearly and succinctly so that the examiner grasps the invention and can do a good search. The second goal is to avoid all of the many pitfalls that can sink a patent in litigation, such as avoiding patent profanity, providing too little (or too narrow) support for variations, and many others.

In almost all circumstances, an entrepreneur or startup company should NOT get a provisional patent application. The main purpose of the provisional application is to *delay* the patent process. A delay is very useful for circumstances, such as pharmaceuticals, where most of the value of the patent is at the end of the patent term. This is not the case for almost all startup companies.

First, having a patent application quickly will add value to the company. It makes business sense to get patents as fast as possible, since the company’s valuation will go up if you are raising money, and it gives the startup company at least some protection in the marketplace. I suggest using the Patent Prosecution Highway or Track One to expedite the patent to try to get a patent within 1-2 years, not the sometimes 5-7 years without expediting.

Second, a “thin” provisional application does far more damage than it helps. Many people file a 1-2 page provisional application, then think they will come back a year later and pay an attorney to write a “full” patent application. Entrepreneurs often think that they are “protected”, so they go out and freely discuss their inventions with customers, investors, and the general public during the one-year period.

This creates a situation where you have two filing dates: a first one for the provisional and a second filing date with the rest of the material.

Every invention has a set of constraints, and it is imperative to uncover and evaluate them when considering patenting. This applies to an inventor or business manager who is trying to ferret out ideas contained in a new product as well as the patent attorney who is writing claims for a patent.

Inventors are always trying to game the system. This is what makes them special. In order to game the system, they exploit various constraints to come up with creative solutions.

The process of innovation, in its most rudimentary form, is overcoming conflicting constraints or dilemmas. A classic example is the dilemma of designing a ship. Long, slender hulls are faster, but are less stable than shorter, wider hulls. The dilemma has two conflicting constraints: wider hulls are better for stability but worse for speed. In order to have both speed and stability, the dilemma can be solved by a catamaran, which has two hulls, both of which are long and slender but have much more stability than any single hulled vessel.

Many inventors can do this optimization process instantly. They think about a problem and can instantly visualize how it can be solved, the problems it will create, and the benefits it will have. Some talented inventors do this so quickly that the entire process is not a fully conscious, rigorous, and methodical thought process.

From a patenting perspective, it is important to slow down or recreate this process and pick apart the constraints actually used by the inventor. Often, this analysis will uncover constraints that were unimportant, or those that can be substituted to identify new inventions or broaden the current invention substantially.

Several patterns emerge:

When all you have is a hammer, everything looks like a nail.”

Inventors are often forced to innovate based on artificial constraints. The inventor may be forced to live with the constraints, but their competitors have not.

This is especially true when a product has constraints that are unique to their company. For example, backwards compatibility to a previous version of the company’s product is an artificial constraint that will not exist for competitors, nor will it exist ten years from now when a patent is just beginning its enforcement period.

A good patent covers the concepts of a product being shipped, but is also relevant 5, 10, and 15 years down the road. The patent’s relevance is based on who may benefit from using it. When a product is successful in the marketplace, competitors will start to copy and improve on the product.

Most patents are a waste of money. Why is it that Apple and Samsung each have many thousands of patents, but when they start a patent war with each other over, they only assert a small handful of patents?

For a small business with limited resources, judiciously selecting ideas for patenting can make the difference between having a valuable portfolio and a worthless one. The key factor on the value of an idea is not the ‘coolness’ of the technology, but whether or not the industry is likely to use the technology at some point in the future. This vision is much, much wider than the typical entrepreneur struggling in the trenches to build a business.

Curating a patent portfolio requires looking past a product going into production, past the immediate, short term business goals of your business, and into the future of your industries as well as other industries.