Getting Real Value from Intellectual Property (IP)

When a patent’s claims don’t cover what makes the technology valuable to the business, then the patent doesn’t have much value.  The Solution Infusion can help you maximize your patent’s value.

Having a granted patent increases value for the patent holder, doesn’t it? Not always.

The goal of IP protection is to provide long term sustainable competitive advantage by making it challenging for competition to make, use, or sell the patent-holder’s technology during a period of exclusivity. This allows an opportunity to reap monetary rewards from new technology with minimal competition. Many patents are granted. Some deliver this goal, yet many do not because:

  • The claims do not cover the meaningful, business-relevant aspects of the technology.
  • The claims are unjustly narrow.

Claims may have to be narrow due to a crowded prior art field, however many times claims could be broader than what is granted.

Other than crowded prior art, a common reason the issues occur is that the inventor and patent attorney are not sufficiently engaged through the entire process of drafting, filing, and prosecuting the patent.

Inventors come up with patentable solutions. A good inventor focuses solutions on business-relevant problems (which provide increased revenue and profit). A great inventor does this and works to ensure the patent’s claims actually cover what’s important to making the business money.

The patent attorney is well trained to translate the inventor’s solution into legal documents but may not understand what is truly business relevant. If the attorney makes decisions about claim scope without a clear understanding of what’s needed for the business, the above issues are more likely to occur.

The best possible scenario to avoid the issues is for the inventor and attorney to form an effective partnership from day 1 – prior to beginning to draft any cases. They must come to a common understanding of what is really important to the business about the invention. Once they have this, as they draft the patent, this understanding can be embedded in the disclosure and reflected in the claims. While it seems obvious this should happen, there are often pressures to skip this step and dive right into “here’s a great new idea – let’s get a patent filed ASAP”.

If the step does occur, independent claims will be aimed at the business-relevant focus, and dependent claims will be aimed at being the primary back-up claims if, during examination or later litigation, the independent claims must be narrowed. If the step does not occur, the odds the issues occur increase. They increase because the goal of business relevance is forgotten in the heat of examination/litigation and the goal becomes “get something granted or upheld”.

The lens of business-relevance needs to be in place each time there are discussions of narrowing a claim, so it’s best for the partnership to continue through examination and litigation.

Without this lens, the discussion often turns to “we should be able to get something granted if we narrow the claim to…”. That may be true, but the narrowed claim will have no value if it doesn’t deliver the business goal. Given prior art, it may not be possible to get the desired claims. But, it is a significant lost financial opportunity if stronger claims could have been granted, but are not.

Bottom line…the inventor must have a business focus and bring that to the forefront with the patent attorney prior to drafting and through any legal processes that may narrow claims. The Solution Infusion can help you ensure this focus is present. Reach out for more information.

To learn more Contact Mark

 

Mark Kline

© The Solution Infusion

 

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