No question about it, corporations and individuals alike demand value for their dollar spent. Questions do arise, however, when we start to consider how value can be defined and even quantified for various industries.
In the context of intellectual property, and specifically patents, strategies for filing patent applications and procuring them as issued patents are generally tailored to add different types of value to a patent portfolio desired by a stakeholder, such as a patent applicant, owner, investor, corporation, inventor, or other interested party.
Recent trends suggest that stakeholders who place too much emphasis on driving up the quantity of patents may be getting less value, or even a liability, for their dollar spent.
Let’s first consider what the stakeholder is buying when they apply for a patent. Generally speaking, a patent is an intangible asset that provides a limited monopoly in the form of an exclusive right to make, use, sell, offer to sell, and import the invention for the term of the patent. Substantial amounts of time, money, research, development, ingenuity, and creativity may be involved in inventing something that could serve as the basis for a patent.
For at least this reason, one might argue that a patent is a valuable asset and that the time and expenditure associated with its acquisition should at least be commensurate with its importance. This is often the exception to the rule, however, particularly in instances in which patents are treated as commodities and essentially presumed to have a similar cost of acquisition or value in a particular field or area of technology.
Theoretically, such commodity practices require more patent filings or issuances to increase the value of the patent portfolio, and thus, these practices focus heavily on the quantity of patents filed or issued rather than on the substance of the invention itself.
Placing a heavy emphasis on the quantity of patents filed or issued to add to portfolio value may force patent filers to spread inventive material across multiple patent applications to meet a set budget, rather than focus on a smaller number of strategic, high-quality patent filings. Even worse, the inventive material may not be sufficiently developed or captured in the patent application in a manner that will allow the application to issue as a patent.
Current trends suggest that more is not always better and that stakeholders should move away from such practices.
Legal developments over the past five years, including the America Invents Act or “AIA,” has made some patents more difficult to obtain and easier to invalidate after they issue.
Particularly noteworthy is a proceeding known as Inter Partes Review, or “IPR,” which provides an opponent a cheaper and faster alternative to litigation for challenging the validity of a patent.
These new developments in the law suggest that strategic, high-quality patent filing practices are more important than ever for stakeholders. If patents are harder to obtain and easier to invalidate, stakeholders should consider placing more emphasis on the content and strategy of their patent filings rather than the quantity of the filings.
Stakeholders who fail to do so risk losing their money on patent applications that never mature into issued patents or are eventually invalidated in AIA proceedings, possibly after they have spent even more money defending them.
As a starting point for a high-quality patent application, stakeholders should consider focusing more on including strategic patent claims for their patent applications. Patent claims define the subject matter that the patent covers and scope of protection it will have. A good patent application strategy may include increasing the number of the patent claims and including variations in terminology. Importantly, it only takes one patent claim to form the basis for a successful patent infringement lawsuit.
Including an increased number of patent claims with variations in language and scope will also require a more robust patent description for support, all of which will provide a number of benefits to stakeholders who desire to obtain and maintain valid patents in their portfolio. Although the cost of each patent application may rise under this scenario, fewer patent applications may need to be filed to achieve a similar scope of protection.
To increase a patent applicant’s chances of obtaining and maintaining a valid patent, current trends suggest that patent applicants and owners should consider:
- Increasing the number of strategic claims filed in the patent application.
- Preparing robust patent application disclosures.
- Drafting and prosecuting patent applications in a way that assists the patent examiner in applying the correct, relevant prior art.
- Developing the prosecution history appropriately during prosecution to help clarify the scope of protection of the patent.
First Published In Dallas Business Journal.