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Text Patent appearing behind ripped brown paper.
First things first: When it comes to patents, there are no guarantees. Why? Because patent law is constantly evolving. From my perspective as an entrepreneur (which is to say, someone who views intellectual property as a tool for furthering my business goals) that’s really neither here nor there.
My concerns are much more practical. How will I get paid for the technologies that I invent? How can I help my patent attorney or agent write my patent applications in such a way that they survive any challenger? Can I help my patent attorney prosecute my patents so that they fend off would-be challengers? That’s what I mean by “bulletproof.”
When you come up with a new invention, the last thing you want to happen is for it to be commercialized without compensation. I know this is a big fear for inventors — myself included. And it’s a reasonable one, because entrepreneurs must always be fighting to get paid.
Being an inventor doesn’t endow you with special privileges. Every entrepreneur is fighting to get paid, day in and day out. (And if you want to profit from your invention, that’s how you need to look at yourself — as an entrepreneur, not only an inventor.)
To be clear, patents are not required to profit from an invention. Consumer product ideas that are not patented get licensed every single day. Typically, products that have a short lifespan don’t require patent protection.
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But let’s say you do have a big invention, and it’s for an industry that’s highly competitive.
In that case, you’re going to need a wall of intellectual property to establish and defend your ownership of your invention. I’ve been in these kinds of industries before; I know what it takes. For me, getting paid is Entrepreneurship 101.
In the early 2000s, I learned a very hard lesson. Like every other inventor, I thought having a patent would stop people from infringing on my invention. Boy was I naïve. After suing the toy company LEGO in federal court for patent infringement, this is what I learned: Patents are just words — words that are going to be interpreted differently by a patent examiner, judge, jury, and at the Patent Trial and Appeal Board.
When you understand and fully embrace this, you can prepare.
So, what can you do to help your patent attorney or agent craft the strongest patent possible — a patent that will hold up in court and at the Patent Trial and Appeal Board?
I consulted with my longtime intellectual property attorney John Ferrell of Carr & Ferrell, who has represented both patent owners and patent challengers at the Patent Trial and Appeal Board, for his advice. The PTAB is the administrative body responsible for adjudicating patent disputes at the United States Patent and Trademark Office.
Ferrell specializes in helping startups in Silicon Valley create value by building their companies into monopolies using intellectual property. The most important thing that you need to do to have a strong patent is to start with a strong invention, he told me in a phone interview.
“A strong invention doesn’t have to be Nobel Prize worthy, it just needs to clearly satisfy the requirements of patentability: To be new, useful and non-obvious. What makes the patent strong is having a clear understanding and description of what the actual improvement is and how this improvement fits into the universe of other related improvements in the field. This improvement, we refer to as the ‘point of novelty of the invention.’”
One way to help gain an understanding of how the point of novelty of an invention fits in is by conducting a prior art search, meaning looking at prior patents and other written descriptions of products and inventions in the space. Searching and reviewing prior art not only helps the inventor understand related ideas and products, but can also be very useful in further improving and refining the patent before filing.
In fact, Ferrell points out, the reason we have a patent office at all is so that we can learn from and improve on the inventions of others.
Prior art is your enemy. But can it also be your savior? Throughout the process of commercializing your invention, prior art can and will be used against you — including when you receive an office action from your patent examiner at the USPTO, attempt to secure a licensing deal, in lawsuits, at the PTAB, and by copycats imitating you.
So, you must learn to look for prior art using Google Patents and the USPTO’s database. After you’ve taught yourself how to do this, I highly recommend hiring an independent third party to help you search further. You cannot find everything, but don’t stop searching too soon. Try to find as much as you can. When you find relevant prior art, read the patent over very thoroughly, starting with the drawings. They will potentially be a roadblock.
Prior art exists for everything. I can almost guarantee you’re going to find patents that could present problems for you down the road. Make sure you absolutely know what your point of difference is versus the prior art before you get underway.
And please, make this a worldwide patent search.
Pro Tip: If you think you’ve found something that’s very close to your invention, I highly recommend working with your patent attorney to determine what you need to do so that you do have a legitimate a point of difference. You might have to redesign or even reinvent. A good patent prosecutor can help you evaluate the prior art and possibly find a workaround.
When you thoroughly understand your invention’s point of novelty, you can make the description section of your patent application much more robust and colorful.
“It’s that ability to add color and alternative embodiments and more information about that point of novelty, that’s what makes your patent strong — because then you can have dependent claims extending from that point of novelty,” Ferrell explained.
Don’t run from what you find in prior art. Instead, consider addressing it head-on in your patent application. That’s another one of Ferrell’s strategies. When he finds a piece of prior art that is very close to the invention, he likes to call out that piece of prior art in the background section of the patent application. This gives him the opportunity to describe the shortcoming in the prior art that the new invention resolves.
“You’re putting it right out there. You can tell the judge or the PTAB, ‘Look, we knew about that prior art, this is how we distinguished it and this is why, and we’ve discussed this with the examiner and we were quite upfront about it.”
On a webinar hosted by my organization Inventors Groups of America last fall, PTAB Judge Kal Deshpande reminded us that all of the exchanges that take place between patent examiners and patent prosecutors are recorded. When a patent whose claims are being challenged lands before a PTAB judge, he said, “We do take a look at what’s happened in the past. And we have a statute that says if this argument has been resolved once before, the court is not going to redo the work on it.”
Deputy Chief Administrative Patent Judge Jackie Wright Bonilla doubled down on the value of prior art searching and addressing prior art references with your patent examiner in the same webinar.
“A lot of times people don’t want to necessarily spend the money upfront to do prior art searches,” she said. “But you might want to actually think about what your weakest positions are in terms of patentability, and really hit it head on during prosecution. Because if you do — if you have addressed the hard issues and come up with your secondary considerations, for example — that’s stuff that when someone comes back later and files an inter-partes review petition, you might be able to say, ‘Hey, this issue was already dealt with in prosecution.’ And that can be really powerful.”
I agree. Prior art was critical to the success of my packaging innovation. What I learned from it allowed me to file intellectual property that was eventually issued. It’s also how I defended myself against LEGO in court. In essence, it’s what created a “bulletproof” patent portfolio for me.
Some of the prior art Stephen Key had to overcome to patent his packaging innovation.
Michelle Armond is an intellectual property attorney who specializes in disputes and litigation. She represents both patent owners and patent challengers at the PTAB. As a panelist on the same webinar, she described how to think about constructing the claims in your application.
“Inventors should be looking for a sort of Goldilocks claim: You want something that’s not too broad and is going to fall to a validity challenge, but also not too narrow that you can’t assert it later,” Armond explained. “Having a good idea of what your strategy is and what the prior art is is going to save you a lot of time and expense later.”
However, it is a mistake to focus only on the invention and not more broadly on the innovation and its context in the market.
“I see this all the time in disputes: Someone comes up with a great idea and they don’t really think it through. The magic of having a skilled patent attorney is to try to think about how this is going to be commercialized, about where the market’s going to go, about how people are going to try to get around it and get different levels of patent protection accordingly — maybe on components, or products, or systems, or different scopes of claims, maybe some broader claims that might not survive validity challenge as well as narrower claims.”
If you fail to rigorously consider what you are protecting and how, the patent protection you end up with may not be particularly valuable, even if your invention was great. That’s unfortunate, even heartbreaking — but not uncommon, she said.
I know exactly what she means, because I frequently encounter patents whose claims don’t serve the inventor’s business interests at all, rendering the patent essentially worthless.
Avoid having that happen to you by ensuring your patent attorney or agent understands what you’re going to be bringing to market and how. I tie the claims in my patent application to my objectives very closely by making a list of all the things I need to protect myself against the competition, and my point of difference. Do the claims in my patent application align? I work with my patent attorney to ensure they do.
As you work with your patent attorney or agent on your patent application, imagine that you’re building up a wall of protection together. Be prepared for the competition to try to find a way of working around your intellectual property using some type of variation. (It’s happened to me; there’s a very good chance it could happen to you.) How? By trying to steal your invention from yourself first.
Come up with as many variations and workarounds of your invention as you can. Make sure some of them are manufacturable. Then continue filing intellectual property on those variations and workarounds to stop others. Your goal is to make it as difficult as possible for someone to work around you, and easier just to pay you.
This is how I ended up with more than 20 patents related to the same packaging technology. Sound extreme? Maybe, but this invention was producing quite a bit of revenue for me. I was able to block others from coming into the space by continuing to figure out how to manufacture it in different ways, and then patenting those manufacturing methods.
Admittedly, the patenting process is expensive. I was able to pursue this strategy once revenue started to come in. And I had my licensee pay for most of the intellectual property, which I had negotiated in our licensing agreement.
Here’s one more tip. Identify the most efficient way of manufacturing your invention. I personally feel this is the most important thing you can do to strengthen your patent. At the end of the day, market success has a lot to do with the price of your product when it hits retail. Include this type of information in your patent application, as well as different manufacturing materials.
Pro Tip: Always make sure you’re giving your patent attorney or agent all of the information that’s necessary for them to do a fantastic job. That includes the information obtained from prior art searching, manufacturing details, material specs, a working prototype, and of course any variations and workarounds that you have discovered.
In conclusion, if you feel there will be a fight ahead, you need to be prepared. You and only you must be the expert on your invention. No one else is going to put in the amount of work required.
Don’t be naïve, and don’t play the victim.