Why Do You Want a Patent?
Patents are not cheap, and the process can be frustrating and time consuming. So, it is important to think about why you want a patent in the first place. It may turn out that patenting is not an optimal way to achieve your goals.
For example, if your invention is not one that leaves a “fingerprint” in a commercial product, you may not be able to detect infringement. If you file a patent application, it will be published even if you are not ultimately awarded a patent. However, even if you succeed, you may end up teaching the world how to use your technology without being able to stop them from doing so simply because you cannot tell if they are, in fact, using it. In that case, trade secret protection may be a better than a patent.
Even if it looks like patenting makes sense, it still pays to consider your goals because it can affect your patent strategy and the budget required to achieve it. For example, if what you really want is the marketing cachet of a patent, then a relatively narrow patent may be all you need. By “narrow” we mean a patent with claims that are significantly limited and easy to design around. Generally speaking, a narrow patent is easier and less expensive to get because you are less likely to run into blocking prior art. In addition, a design patent – which is typically far less expensive than a utility patent – may do the trick.
If, however, you want to generate licensing revenue, you will typically need broader claims because a sophisticated potential licensee will study your patent to see if it can be designed around. “Designing around” a patent generally refers to making a product similar to the one that is patented without using the specific features covered by the patent’s claims. A commercially good “design around” is one that obtains the main benefits of a patented invention without using the claimed features. Obtaining a patent that is fortified against design arounds will generally require a lengthier and more contested prosecution. In addition, potential licensees do not want a patent that is easily invalidated. So, you should consider doing a prior art search to ensure that the best prior art is identified. The patent search that a US Patent and Trademark Office examiner will do is far less thorough and rigorous than the one a sophisticated defendant will do in an infringement case, and the USPTO is limited in the types of prior art it can even search. A sophisticated licensor will want to know what searching has been done – and will likely do some on its own – before taking a license. In addition, it pays to add some dependent claims that have their own independently patentable features. That way, if a broader claim is invalidated, the narrower dependent claims may survive and provide some protection. A licensee will tend to value a patent with good dependent claims over one without them.
If you want to enhance the market share for a product that you are going to make, again, you will want a patent with claims that are broad and difficult to design around or invalidate. With respect to design-arounds, one key question to ask is whether your invention is something a competitor can easily live without. If so, it may not be a worthwhile candidate for patent protection because a competitor can avoid using your patent without losing market share. Also, if you want a patent because you are making a product and want to protect its market share, you will also want to know whether you can practice the invention without infringing anyone else’s patents. There is a common misconception that having a patent gives you the right to make, use, or sell products covered by the patent. That is not the case. A patent gives you the right to exclude others from practicing the patent. However, an earlier broader patent may impair your ability to make a product under your own patent. So, if your desire for a patent is contingent on your making or selling a product under the patent, the existence of blocking third party patents may affect your decision to seek a patent in the first place. Alternatively, you may want to develop and patent your own design-arounds to avoid those patents. If third party patents become a problem, you may decide to shift gears and seek to get a patent so you can license it instead of practicing it yourself.
Some companies, especially start-ups, decide to get patents to enhance the value of the company. Many of the same considerations apply as would if you were seeking licensing revenues or enhancing market share for your own products. However, in this case, even if the patents you get are narrower than you would like, getting a large number of them can help you negotiate a higher price for your company. It depends on the company and what other assets are part of the sale, but in our experience, the level of scrutiny individual patents will receive when a company is acquired is reduced when there are a lot of patents. So, a large patent portfolio can help you get a better price for the company even if individual patents lack particularly broad claims.
These considerations may be fluid and iterative, but to the extent possible, thinking about why you want patents and how you intend to monetize them will allow you and your patent attorney to develop a patent strategy that is more likely to meet your needs in the most cost-effective way possible.