In the interest of full disclosure, “yes,” this particular blog post is a marketing piece. But, it is also intended to be educational and inform prospective clients why it matters who they select to work with to identify innovations, draft patent applications and strategically manage their company’s patent portfolio. This brings up two related questions: why should it matter; and assuming it does matter, how do I identify the right person?
Why Does It Matter?
To answer the first question — a properly constructed patent portfolio is more than a collection of government-issued property rights. Because it is a set of property rights backed by the judicial power of the U.S. government, it is a business asset. A patent application (which is really a misnomer, as a patent application is closer to a 30-50 page report) uses text and images to describe a use of one or more technologies or structures in a specific way to solve a problem. Each report must be prepared and expressed in terms that satisfy very specific requirements, as expressed by law and court decisions. Further, the author of each report may choose to include or exclude certain language or concepts to accomplish their goal, where that goal is more than to obtain a patent; it is to obtain a patent with a certain set of enforceable definitions of the property right (termed “the claims”). This is why the contents of a patent application matters, and also why it is so important to select the “right” person to draft a patent application. This is particularly true if the application is directed to a complex technology and/or is expected to protect a fundamental aspect of the product, service or business model.
The patent application, if allowed, will be issued as a U.S. patent. This enables the owner (who is not necessarily the same as the inventors, if they have assigned their rights in the invention to another party) to use U.S. law and courts to prevent others from doing certain things. These include making, using, selling, offering to sell or importing the claimed invention. But an important (and often overlooked) aspect of owning a patent or patents is that an owner of a patent can obtain both tangible and intangible benefits without having to sue someone if they view a patent as a business asset that can be helpful in achieving certain business goals.
In one sense, a patent application is a tool to convert an idea into a business asset. Because this asset may have multiple uses or potential uses (some of which may not be fully understood when the application is filed), ideally the tool should be capable of being adapted so that it may be used in those multiple ways. These use cases may include:
- Reducing the likelihood of being sued by creating the threat of a counter-suit (where this may involve submitting a new set of claims in an application in an attempt to cover a competitor’s product or service);
- Increasing the likelihood of being able to offer something of value to a company that the owner wishes to engage with in a business relationship;
- Enabling the execution of a patent cross-license with another party, with an accompanying payment to (or lesser payment from) the patent owner;
- Protecting its own market or at least erecting a barrier to entry of a close competitor; or
- Increasing the likelihood of obtaining additional capital by serving as collateral for a loan, demonstrating inventiveness or providing an exit strategy for investors via licensing or sale.
A properly constructed patent portfolio is one that increases the chances of having leverage over (or providing something of value to) another party in a business relationship. Any situation in which a claim or claims arguably cover a product or service of another party, a product or service in that party’s product development pipeline, a product or service of a competitor of that party, or even a product or service of the competitor’s competitor may provide value to the patent owner. The variety of possible uses, along with the importance of (and requirements on) how concepts are described in a patent application is why it matters who a company selects to prepare its applications. This is because the language and concepts described in a patent application are much more than simply a translation of what an inventor said into “legalese;” companies that do not understand this difference have often been disappointed by the value of their patent portfolio.
How Do I Identify the Right Person?
Because of the complexities of preparing a patent application that can be used to support claims of varying scope and contexts, it is best to look for a patent attorney or patent agent who has indications of being able to handle the technologies and business models that are most relevant to a company. These indications typically include at least some (if not all) of the following:
- A technical degree (preferably an advanced degree or an undergraduate degree) and several years of experience as an engineer, researcher, scientist, etc. in the most relevant mathematical or scientific discipline (applied math, physics, electrical engineering, biology, chemistry, chemical engineering, biochemistry, software engineering, computer science, fluid mechanics, mechanical engineering, etc.);
- Experience in protecting innovations in the same general category as those expected to be developed by the company (this is a bit nebulous, but examples might include eCommerce platforms, SaaS, web or cloud-based services, authentication methods, virtual reality systems, artificial intelligence methods, machine learning, data mining, telecommunications, semiconductor processing, signal processing, etc.) — this enables the patent attorney or agent and the inventors to have a larger common knowledge base, and as a result, to be much more likely to communicate effectively when it comes to identifying and describing the protectable aspects of the product or service;
- At least five years’ experience, but preferably 10, in which the person has focused almost exclusively on patent prosecution and has also had significant experience with either patent licensing or patent litigation support;
- Experience as an in-house patent counsel as well as in a law firm; this enables the person to have a better understanding of the business issues that may be involved and to present issues in terms of business decisions (in some cases this may be gained from working in a law firm with someone who has served as an in-house counsel); and
- If in a law firm, experience serving as a virtual patent counsel for a company of the same relative size or stage of development as the company that wishes to hire them — this ensures that the patent attorney has had experience interacting with senior business, legal and technical executives (such as founders, CTO, GC, etc.) and understands their concerns regarding budget, market developments, investors, etc.