For example, how a patent term is construed may depend on how it is defined in the Specification. Or how the patent is intended to be used may influence in some manner the construction of the patent claim at a later date. Therefore, although the claims are what define the protection, the claims’ value depend at least in part on a well written Specification.
From a general point of view, it is helpful to classify patents and the Specification into one or more categories. Although arguably a patent (or pending application) could be potentially placed into more than one category, these categories, at a minimum, help to segregate patents and pending applications into a possible way in which they may be used – and add value.
The four categories are core technology, market protection, defensive strategy, and offensive strategy.
As the names imply, core technology patents (and claimsets) focus on the narrow most important part of the invention, market protection uses patents to protect the invention in view of market conditions, defensive patents are used to protect the company when competition comes knocking, and offensive patents are constructed to be asserted.
The remainder of this article will focus on core technology. Subsequent postings will focus on the remaining categories.
As I’ve talked with startups, one of the most frequent questions I hear is “What can I do to protect my invention and company?” First and foremost should be to protect the “crown jewels” of the company. This may be done in a variety of ways.
For example, a company may have several core technologies. As illustrated in the following figure, the company may have Core Technology 1-3. Such core technology may have overlap between the technologies, as well as between all of the technologies.
Core technology patents simply concentrate on the most “core” part of the all of the technologies. Once this initial “core” is protected, then we could expand outward from the center and protect other technologies. Protecting core technology may therefore proceed in stages, with the first stage protecting the most “core” technology, and subsequent stages protecting adjoining technologies.
From a practical perspective, we may accomplish this by filing multiple applications, each targeted at a different aspect of the “core” technology. The focus here is on writing narrow claim sets that are directed at protecting, at a minimum, the most fundamental aspect of the technology. Each of the narrow claim sets may be directed to a specific aspect of the core technology.
For example, if we were dealing with a mechanical invention, we may have multiple sets of claims directed to the invention, each focusing on a particular aspect of the invention, such as a mechanical feature, the overall structure, a novel process, etc. With respect to a software invention, the narrow claim sets may be directed to a specific algorithm, a user interface, a client or server interface, etc. Again, the focus here is to set up small fences around the most valuable technologies.
In summation, although a patent’s value may be binary (it gives or doesn’t give protection), its intended manner of use may take on of a variety of designations and/or categories.
