I know several inventors and patent attorneys who have breathed a sigh of relief after realizing that a patent has missed an opportunity to impede their commercialization path. For example, the patent claims of a prior art patent may contain unnecessary limitations on design or implementation; despite the absence of a preceding prior art landscape.
Although some patents are obtained merely to check a box or promote technology, most are intended to exclude competition from an invention space. So why spend $10,000 to $100,000 for a patent that does not exclude competition? Here are three tips for keeping the wolves at bay:
1. Choose carefully
Patent attorneys are not commodities so find a good one. I usually find patent attorneys through the good recommendations of their peers. Similarly, I have seen several companies benefit from auditing their current patent firm with a second firm.
Select a patent attorney who has the technical background to quickly understand your invention in detail, as well as its role in your business plan. Understanding the invention is critical for drafting effective claims, enabling the invention and minimizing ‘design-arounds’. Moreover, time is money and the quicker the patent attorney grasps your invention, the less you spend on patent drafting.
- Years ago, a research group wanted to patent two inventions earmarked for two academic manuscripts. The process in the first paper was used in the second to form a material for tissue engineering. However, the second paper did not require the first, and the first was broader and more valuable than its application in the second. De-conflating the inventions in the patent application, among other things, wasted many hours and thousands of dollars. A weak patent application was submitted just before the deadline and then abandoned five years later.
2. Tear down that wall
Don’t throw the invention over a wall – a good patent requires collaboration with the patent attorney. Transforming technical details and business objectives into a legal document is an interdisciplinary process. In particular, the inventor/scientist/engineer must actively participate in identifying novel elements and technical ‘design-arounds’ for protection, so that technically savvy competitors cannot pursue them. It’s impractical (and costly) to expect the patent lawyer to understand your invention space as well as a specialist who has lived and breathed in the space for years. A kickoff meeting can be an effective venue for brainstorming potential claims and ‘design-arounds’ with the patent attorney before documentation and billable hours accrue. Here are a few questions that might lead to anticipation of technical ‘design-arounds’:
- What are the ways in which you might practice the invention?
- How might a competitor or potential licensee practice or design around the invention?
- How might your invention evolve during the R&D process, production scale-up, or post-market surveillance? In other words, what risks remain and how might they change the course of the product?
- How might the patent benefit future product lines or adapt to a changing market?
- What entities are the focus for infringement? What entities are not the focus (e.g. a medical practitioner or a customer)?
In truth, it is often unlikely that the innovator can anticipate and prevent every creative design-around, but she/he can anticipate much of the low hanging fruit. The lawyer should capture these technical and legal ‘design-arounds’ in the patent application.
3. Keep your eyes on the bottleneck
Align your patent application with business objectives. Focus on identifying the commercially valuable bottlenecks. These bottlenecks are your invention – not the product that embodies merely an example of the bottlenecks. Then, instead of describing each component of the product with equal weight and consideration, focus the patent application on protecting the valuable bottlenecks and associated ‘design-around’ risks. Taking a stab at this in a detailed patent disclosure for the lawyer can improve the final patent application and sometimes reduce the billable hours required for drafting.
- Theoretical example: An academic group develops a new label-free biosensor for potential use in drug discovery. The main commercial advantage is that the label-free biosensor is not a destructive test, so, for the first time, the cells can be monitored for days, providing higher quality data. At the kickoff meeting, the team decides the key bottleneck is long-term monitoring of cells for this particular cell assay. In contrast, the label-free biosensor is a minor bottleneck; it is treated as one of several possible ways to achieve long-term monitoring, as other companies could conceivably develop labeled tests that are similarly nondestructive. Although the patent does include claims on the biosensor, it focuses and expands on enablement and valuable embodiments of long-term monitoring, such as previously undetectable cellular events, data analysis, and methods to exclude dedifferentiated cells.
In brief, some people say that a good patent lawyer “gets into the head” of the inventor to extract the invention. A counterargument is that with good collaboration and alignment of the patent application with business objectives, this may not be necessary.