There are several advantages to pursing protection for a key innovation in the form of a “family” of patents and pending patent applications. These include the possibility of obtaining protection in the form of claimscovering different aspects of an invention, and different infringing actions (of a user, maker or seller of an invention) as those actions would be described from different perspectives (e.g., server-side, client-side, internally, externally, etc.).
It is important to note that some of those uses or perspectives may not be apparent when the application is filed, and may depend upon the business environment, business models being pursued, or technologies that are developed to solve problems that arise in the industry. Each of these aspects of a business may change over time in response to economic developments or efforts made by competitors.
A family of patents and applications may also provide the option of having a choice of which among multiple claim sets is asserted or licensed; this may (in some cases) enable the assertion of claims in some patents without putting claims in the un-asserted patents at immediate risk. A family of patents also increases the likelihood that a targeted party will have to expend resources to fight an assertion or an aggressive licensing effort.
In order to obtain the benefits of pursing protection for an invention in the form of a family of patents and applications, it is necessary that the initially filed description (termed “the specification”) and figures be sufficient to support the other perspectives, uses cases or implementations, and that they do so in a way that satisfies the enablement and written description requirements of the patent law. Enablement requires that the sum of the information disclosed in the description and figures contain enough information to “enable” one of ordinary skill in the art at the time the invention was made to implement the invention without encountering significant obstacles that would require further inventive efforts to overcome. In some sense, an enabling disclosure in the hands of one of ordinary skill is one sufficient to allow that person to produce the invention using standard engineering techniques and abilities. The “written description” requirement has been interpreted to mean that the sum of the description and the figures are sufficient to indicate that the inventor was in possession (i.e., they recognized the implementation approach and/or use case) of the form of the invention that is represented by the claims being asserted.
However, drafting a patent application in a way that can provide the proper support is a non-trivial exercise. One way to accomplish this goal is to follow a process that attempts to preserve the possibility that the application may be used to support claims directed to other likely use cases and implementation methods. This may be done (in part) by considering alternate industries in which the solution represented by the invention might have value and alternate ways in which a function or operation that is part of the invention could reasonably be implemented.
In some sense the task is to develop a specific tool that can be used to obtain leverage in order to assist in gaining or maintaining a competitive advantage. However, certain constraints apply: (1) the tool will not be available for at least 2 to 3 years, but it must be described in detail at present; (2) the possible situations in which the tool will be needed are only generally known at present, and the ways in which it is desired to use the tool may change between now and when the tool becomes available; and (3) the specific form of the tool that will be needed is only known in a general sense at this time (e.g., the tool may need to be capable of being implemented in one of several ways, all of which must be properly supported).
Given the practical considerations and constraints, how does one prepare a patent application in a way that ensures a greater likelihood that it contains adequate support when filed for claims that are intended to protect against uses that may not be known or fully understood until years later? One way is to craft patent applications that not only describe an invention and its use by the company itself, but also provide support for claims covering a generic implementation of the solution represented by the invention, where that solution may be relevant to multiple use cases, operating environments and industries. Using this approach, the patent application is not simply a description of a single product feature or process, but instead represents a description of a solution to a problem or class of problems, with the solution being expressed in varying levels of detail and in terms of being applicable to multiple operating environments.
An important part of the process is deciding how to characterize an innovation; in order to do this, it is helpful to consider a new product feature or service from a different perspective than it might typically be considered. Instead of viewing a feature or service as providing a new option for a user, it should be viewed as providing a solution to a specific technical and/or business problem. This is easier said than done, as it requires an engineer or patent attorney to figuratively “step back” and formulate a “generic description” of a higher-level problem that is being solved, rather than focus on the details of an implementation that produces the new feature or service.
Such a generic description will typically be based on a number of considerations, including (a) the context in which the feature or service is used (using general, non-limiting terms to describe the operating environment for the feature or service); and (b) what does the feature or service enable a user to do? Based on the answers to (a) and (b), it may be possible to formulate a statement that, at a high level, describes the technical or business problem for which the innovation provides a solution.
Next, it is necessary to determine other possible use cases or situations in which the invention may be applicable and hence other entities for which such a patent would have value. In order to do this, it is helpful to consider other contexts in which the same or a similar problem arises (where this is based to some degree on the generic description of the invention developed previously). For example, if the problem being solved relates to how to optimally allocate bandwidth among multiple content delivery channels given a certain constraint, then it may be helpful to consider other industries in which a similar constraint arises or in which multiple streams of “product” are delivered via different delivery channels (where, for example, those “channels” may be communications channels, different networks or different physical delivery paths, and the “products” may be email messages, downloaded content or physical packages).
One of the keys to describing an innovation in a way that can support multiple use cases and implementations is a technique I refer to as “functional deconstruction.” This is an organized way to identify information needed to prepare an effective application and to structure that information into a description of the innovation that provides value to a company by creating a useful business asset.
Functional deconstruction is a form of system analysis, where instead of focusing on the details of a specific implementation of an invention, the operative elements or process steps are generalized and expressed as broader concepts. These broader concepts may be classes of elements or groups of processes that operate to perform a similar function (e.g., sorting, ordering, scaling, selecting, estimating, filtering, comparing, generating a type of output, etc.).
In order to practice this approach, the first step is to isolate each of the elements of a system or process that can be used to implement a generic example of the invention. In some ways, this step is similar to that of generating the “problem statement” referred to previously. The goal is to identify the primary functional elements or components of a generic implementation of the invention, and to do so using high-level and nonspecific language where feasible. For example, this might be accomplished by generating a high-level, functional block diagram of a system for implementing a generic example of the invention.
The result of this approach will be a set of elements, steps or functional components that are needed to implement a generic version of the invention. For example, there may be an element that permits a user to input data, an element that processes the input(s) to extract a specific characteristic, an element that compares that characteristic to determine a relationship between what the user entered and what the system has previously stored, and an element that transforms one form of input into a different one having a certain characteristic. It is important to make sure that the set of elements, steps or functional components includes those needed to perform what are believed to be the novel steps or functions of the innovative device, process or method.
After identifying the set of elements, steps or functional components, it is necessary to generate a list of the values or types that each element can take and still be capable of implementing the invention. This is a form of listing the “variations on the theme” for each element. The variations may be different devices that can be used, different data processing techniques (though all produce an equivalent output for purposes of the invention), different filters, different transforms, different ingredients (though all have a common characteristic), or different physical structures that can perform a function that is equivalent for purposes of the invention. Communications with the inventor may be needed at this point to isolate those “variations” that are practical in a business sense and/or technically feasible, or at least to remove those that are not. In addition to listing these variations, it may also be helpful to include several similar, but arguably different ways of describing each function or step of an innovative method, or each function or operation of the elements of a system or device (these might be termed “substantially functionally equivalent synonyms” for the purposes of implementing the invention).
Next, it is possible to generate various combinations of the possible values or types for each functional element and from those to construct a set of possible implementations of the invention. These possible implementations should be constrained in that only those combinations that are practical in both a business and technical sense should be part of the set.
Given the above information, a patent application can (in theory) properly support claims directed to one or more of the following:
- the embodiment of the invention implemented by the inventor (which is typically the product feature the inventor developed);
- possible uses of the invention to solve a similar problem that arises in different operating environments (and certain modifications to the implementation that are necessitated by the different environment); and
- multiple possible ways of implementing each of the primary functional steps or elements of the invention (which may be applicable to the original and/or to other environments).
In theory, the developed information enables the patent application to satisfy the written description and enablement requirements in so far as supporting a wide range of claims. This permits the introduction of claims that specifically address different operating environments and different implementations of the conceptual basis of the invention. As a result, the application can be “tuned” in response to recognizing a suitable strategic value proposition (such as a situation in which having leverage or a stake would be beneficial). Thus, by thinking in advance about how to describe and generalize an innovation and focusing on the underlying conceptual foundation for the invention, the value of a patent application directed to that innovation can be increased substantially. As a result, it can be used to generate one or more patents or applications that are part of a family and function as business assets.