The 50 to 499 person high-tech company Jonah Probell Nothing presented here is legal advice.
A government-enforced monopoly ◦ For a limited time ◦ In a particular region On a technological improvement To extract the economic value of a market segment 2
Not playing the game is not an option Under a first-to-file system, a company must act or be blocked by a later competitor A company must understand both the rules and strategy 3
Comprises: CTO, Legal, and Marketing Meets quarterly Reviews market developments and competition Prioritizes invention disclosures for filing Checks product release schedule against invention disclosures Plans US and foreign patenting strategy Reviews patent budget 4
Maintains an accurate docket Solicits invention disclosures ◦ Hangs around the water cooler Conducts prior art searches Conducts inventor interviews Routinely writes and files the highest priority invention Checks conference papers against invention disclosures 5
1. Propose various claims of different breadths ◦ Describe conceivable products of competitors, prospective licensees, and potential acquirers 2. Search for prior art and eliminate non-novel claims ◦ All material prior art must be saved and filed 3. Analyze the market size that each novel claim can capture 6 Obvious does not carry its dictionary meaning in the context of patents. Obvious means that multiple prior art references must be reasonably combined to prove a claim not-novel.
Each claim element limits the market scope ◦ Fewer potential products infringe Less market value Each claim element limits the prior art ◦ Fewer references for the combination Greater (re)exam strength 7 Claim elements ValueStrength Value-strength inversion Both allowability and enforcement are per-claim, not per-application or patent.
A motor vehicle (large market, much prior art) A motor vehicle having: ◦ Four wheels; (eliminates motorcycle and airplane market segments) ◦ Two seats; and (eliminates sedans and SUVs) ◦ A bed for carrying lumber. (eliminates sports cars) A motor vehicle having: ◦ Four wheels; ◦ Two seats; ◦ A bed for carrying lumber; and ◦ 1001 colored lights. (no prior art, but no market) 8 The name of the game is the claim.
Avoid searching patents, lest you learn that your product infringes Thoroughly search non-patent prior art to save the examiner time ◦ Examiners only have a few hours for each application Let the examiner find patent prior art Add and amend claims Finding prior art strengthens a patent ◦ Acquirers and investors study patent applications’ histories 9 The examiner is your friend.
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Capture whiteboard drawings Edit a doc together using a projector ◦ Keep the invention disclosure doc at hand 1.Have inventors dictate a picture claim 2.Break out dependent claims 3.Achieve the broadest reasonable claim 1 4.Define technical terminology 11 Avoid inventor “myopia”. Describe other companies’ conceivable products.
No visible deadline for many filings Product deadline pressure is ever-present ◦ There is never a good time to work on patents Bonus programs are insufficient motivation Assign inventors time to review draft applications 12
No part of a well-executed strategy ◦ Used by pre-funding startups ◦ Used by unrepresented inventors ◦ Used for unplanned filings before public disclosures Conferences Delays the date of receiving an enforceable patent Encourages careless drafting 13
Foreign patents must be filed within one year of US filing Consider where likely-infringers reside Consider foreign market size ◦ But only what products might be made if the US market is closed Use PCT procedure to buy an extra 18 months if needed 14
15 These are gross approximations ActivityApproximate attorney fees Approximate Office fees US non-provisional (regular) patent application $10,000$1500 Strong US non-provisional patent application $20,000$1500 Provisional patent application $500$130 Strong provisional patent application $8000$130 Provisional conversion$6000$500 Translation (per language)$5000 PCT procedure$500$2000 Per-foreign office filing$3000$1500 Enforcement litigation$2,000,000
Patenting is mandatory Draw a team with expertise in technology, legal, and marketing Be quantitative in choosing inventions to patent Search non-patent prior art Draft claims meticulously Consider international strategy and budget 16