As previously emphasized, patent use is not binary and may be
focused on one of a variety of categories.
The focus of this article is on market protection patents, as indicated below.
Often the most valuable patents
are those that anticipate, many years in advance, where the market is
going. Market protection patents deal
precisely with this of strategy – they anticipate where the competition is
headed, where the market will end up, and what consumers will desire.
Steve Jobs was a master at
anticipating what the consumer would want.
In fact, he made it his job to figure out what consumers wanted. He obviously succeeded at many levels given
the popularity of the ipod, the iphone, and the ipad. Patents could, and should, be used in a
similar manner. They should not only protect the invention “as is” right now,
but should anticipate where the market is going so that the invention is still
protected.
Market protection patents focus
very much on thinking outside of the box, on the different ways that the
invention may be applied. Although some
patent attorneys rely on a general understanding of a POSITA to supplement the
information in the specification, a patent will be stronger if specific
embodiments are actually disclosed. The
more that is disclosed, the easier it will be to convince a jury that the
invention was intended to be construed in such a manner.
There are several types of market
protection patents. First, and
consistent with what I have been describing, the specification may be very
in-depth and describe how the invention will be used or applied (e.g.
anticipating where the market is going).
Although such types of patents may have several hundreds of pages (to
cover every embodiment), I would add one caution. As the page number increases, the USPTO will
tack on some significant charges. For
example, for every 50 pages over 100 pages (application size), a fee of $400
will be applied.
Second, market protection patents
may include “fence” patents or “design around” patents.
The term “fence” patents may include patents which simply fences in your
competition. For example, if your
competition disclosed (or received a patent for) a software algorithm dealing
with displaying a calendar, a fence patent may be one that modifies the
original base elements (apply a similar algorithm to an email system or to a
photo system, etc.) or otherwise limits the freedom of the original elements in
some manner. By limiting the options of
a competition, it effectively hedges them into one embodiment and prevents them
from expanding into other areas of the market.
Fence patents may also refer to a
proactive act by the patent holder. For
example, after receiving a patent, a patent owner may then apply for several
other patent applications, each of which focuses on a substitute or alteration
of the original patent. By acting in
this manner, the patent owner would effectively hedge in the competition by preventing
them from expanding in the market off of the original patent.
A design around patent is similar
to the second fence patent that we just discussed. If the competition has disclosed a circuit
board with element A, a design around may include designing a similar circuit
board but with element B. This may in
some regards fence in the original patent (as we discussed), but more
importantly, this gives the patent applicant the freedom to use the disclosed
embodiment. So although one possible
consequence of a design around patent may be to fence in the competition, the
focus here is on giving the patent applicant the freedom to make and/or use the
intended product.
Design arounds are very much a
reality, especially in high technology.
For example, a first company may discover that a component of their
system may infringe a patent associated with another entity (e.g. a competitor,
etc.). To avoid any problems, the first
company may modify the component by coming up with an alternative design which
does not infringe the claims of another patent.
Third, market protection patents
may further include “live” patents. The
idea behind this categorization is simply to always have a live family member in existence. By “live,” I mean a family member which is
still going through the patent review process.
In most instances, this issue comes up when a patent application is
nearing issuance. Rather than letting
the family die, in the sense that no further review will occur with respect to
the patent claims once the patent is granted, the patent owner may file a
continuation or a continuation-in-part which effectively keeps the contents of
the specification alive (i.e. subject to review, etc.).
Keeping a patent application
alive is beneficial for a variety of reasons.
For example, claims may be modified, or new claims may be drafted based
on existing support in the specification.
In other instances, having a live family member is useful for defensive
and offensive reasons, as we will analyze in another post. In short, keeping a family member “live”
ensures that modifications can more easily be made and tailored more accurately
to market terminology.
Market conditions can be as as unpredictable as individual consumer's desires. It is important therefore to not put all of your "eggs in one basket," but to strategically write and prepare the patent Specification to anticipate where the markets can and may go. Doing so puts the patent application in a much better position to respond to volatile market conditions.
