This is where I am coming from: I believe in substance and not in style.
And that has a lot to do with patents, as you will see in the following short article.
Emphasizing Substance in Patent Filing
When I hear that someone wants to file a patent for something that does not yet exist, at least as a proof-of-concept model or as a simple simulation, I am always very skeptical: “Are we about to squander funds on this patent application?”
Too much nonsense have I seen in the past, sometimes spurred by governmental incentives to increase patent numbers. You can imagine where that went: the floodgates were opened for abuse that led to the exploitation of the system. But I digress. Political discussions are not the intent of this conversation.
The question I am therefore addressing today is the validity of filing patents for concepts that do not yet exist. Is there a method to identify and systematically search for such concepts? And if there exists such subject matter, what does it look like? Can we characterize it such that we can systematically look for it? If we can do this, it would be far superior to random guesswork.
Strategic Patent Tactics vs. Tactical Patent Strategy
I need to resolve the apparent contradiction presented in the title of this article. How is it possible to use “strategic” and “tactics” in the same sentence when they seem to oppose each other?
In the realms of business and legal affairs, these terms are frequently paired. “Strategic” pertains to overarching plans aimed at achieving significant, long-term objectives. In contrast, “tactics” refer to the precise actions or steps undertaken to fulfill the strategic vision.
Thus, the term “Strategic Patent Tactics” implies a comprehensive approach that includes specific actions to accomplish the broader objective of solid and effective patent protection.
In the dynamic landscape of intellectual property, where innovation is the lifeblood of competition and long-term survival, patent tactics play a crucial role in ensuring a company’s creative outputs remain both protected and potent.
The objective here is to view patent drafting not just as a means of obtaining legal protection for current inventions but also as a strategy to strengthen one’s future market position.
In my experience, I have identified three insightful patent tactics that stem from this objective and that have a significant practical influence on patent drafting.
The Meaning of “Strategic Patent Tactics”
- Protect Innovations: Ensure that not only your current Blue Ocean but also your foreseeable future Blue Oceans are safeguarded from being turned into Red Oceans by your competitors. Click here if you do not understand the terms “Blue Ocean/Red Ocean”: https://ip-lawyer-tools.com/book-review-blue-ocean-strategy-by-w-chan-kim-and-renee-mauborgne/ This strategic tool is of utmost importance to understand.
- Extend Market Exclusivity: Broaden the scope of a patent to cover various iterations of an invention, thereby prolonging the period during which competitors are excluded from the market.
- Prevent Infringement: Construct patent claims in a way that makes it difficult for others to design around them without infringing.
I am dubbing these three strategies as “prevent being invented on top of”, “prevent being circumvented”, and “prevent being blocked for the future”.
Strategic Patent Tactic #1: Preventing ‘being circumvented’ with Broad Claims and Divisional Patent Applications
In the realm of patents, specificity might seem advantageous, but it can open doors for competitors to “build around” your patent. A classic example is the case of the “Epilady”, where a narrow patent claim allowed competitors to replicate the same end result without infringing on the patent. To counteract this, innovators must broaden their patent claims. This strategy involves drafting patent applications with broad claims that encompass various iterations and applications of the core technology as they are known at the time of filing the patent application.
One strategy to achieve both a quick grant of a patent and a broad scope of protection is to provide both so-called “picture claims” in the specific language of the embodiments and so-called “broad claims” in a generic language for the same inventions. Seldom will the textbook approach work: examiners will usually not allow a quick grant of a patent with both picture claims (in the form of dependent claims) and broad claims (in the form of independent claims) in it because broad claims often need more discussion back and forth with the Patent Examiner. This is when a divisional patent application is filed for the broad claims so that the initial patent application with only the picture claims it can smoothly proceed right away to grant while the haggling with the Patent Examiner about the wording of the broad claims can continue in the divisional patent application. That tactic shows the public immediately that there is a patentable invention and retains at the same time the broad claims for a later grant. Such a patent family can be a nightmare for your competitor regarding Freedom-to-Operate evaluations.
Another notable strategy to provide a balance between breadth and specificity, wherein claims are broad enough to cover potential future developments but specific enough to withstand challenges of obviousness or lack of novelty, leads to the issue of how to protect product variations that lack unity over the prior art. While it is allowed to file patent applications that contain several different inventions, patent laws do not allow the grant of patent claims in one and the same patent application if these patent claims should be filed and prosecuted in separate patent applications. I have earlier written about that (click here) so I don’t repeat myself in the present discussion.
Still another strategy to provide a balance between breadth and specificity applies to patents for so-called “selection inventions” that are often found in the technical areas of pharmaceuticals or materials science, but not only there. If these selection inventions are defined by stating parameter ranges that provide advantageous technical effects, then there will be a patent granted for working the respective inventions according to these ranges. A simplistic approach – yet seen often in practice – is to claim parameter ranges that are much wider than the embodiments that are presented in the same patent application would support. Such broad patent claims seldom make it to grant because patent examiners know about this tactic that reminds me to hiding valuables in the flushing water cistern of a toilet: this is the low-hanging fruit where one looks first. While it is allowed to file patent applications that contain overly broad patent claims, patent laws do not allow the grant of such broad patent claims if they are not supported by evidence that the invention also works in practice in full over the claimed ranges. And if these patents are granted then these patents are not carved in stone; there are ways to revoke these unrightfully granted patents in the future.
Strategic Patent Tactic #2: Securing Value Chain Dominance to Prevent ‘Getting Invented on Top Of’
When a patent describes a core technology, it is essential to forecast its potential applications. Competitors might “invent on top of” such patents, thereby controlling its subsequent uses and locking the original inventor out of the market. To avoid this, forward-thinking companies must examine the value chain thoroughly and identify downstream opportunities for patenting. Drafting patents with an eye on future applications — the “use of use of use” — can protect not just the invention itself but also its downstream integrations, ensuring a more robust control over the technology’s lifecycle.
This strategic patent tactic #2 directly leads tech companies into the patent licensing business. Some say that this is innovative in itself because this step meets all the criteria of the definition of “diversification”: the company enters an entirely new area of making money: a totally new group of customers, called “licensees”, need to be convinced that they want to pay money for what they are doing anyway, without you. Be prepared for resistance unless you bring the corresponding technology along so that the licensees don’t need to develop their own solutions based on your patents. I have seen this business concept working only once in my three decades in the patent business, and this venture does not really thrive. Sueing the unwilling future licensees in court does not make much sense because a) this comes with a certain risk of losing the case and b) patent litigation is capital intensive and not the core business of the patent owner.
Strategic Patent Tactic #3: Forward Patenting to Avoid Future Blockades
The third tactic addresses the risk of “getting blocked for the future.” It’s not uncommon for a company to innovate a product only to find that the technological landscape has been claimed by competitors’ patents by the time they initiate the development of the upcoming innovation. Forward patenting is a visionary approach where a company proactively patents future-oriented technologies. By anticipating the next waves of innovation – often in the form of non-incremental transfer innovation – and securing patents in advance, companies hope to avoid being fenced out by competitors’ patents.
Needless to say, this approach comes with some components that look mystic to outsiders, similar to the practice of ancient Roman fortune tellers, known as haruspices, practicing divination by examining the entrails of birds.
If you want to turn this strategic patent tactic #3 into a patent licensing business, and if you do nothing else, then you create what is called a “patent troll”. As you have nothing to bring to the table when it is about transferring the corresponding technology, expect extreme resistance from your future “licensees”. I have heard of this business concept working only in the US, maybe because of the US litigation procedures that are much different from the rest of the world. One thing is clear: for a regular patent owner of any size, the patent troll business is not a viable option.
How to Apply Strategic Patent Tactics When Drafting Patents
There is no doubt that ordinary people cannot easily apply the above strategic patent tactics when drafting a patent. That also applies to patent attorneys.
It is no longer about protecting what is already invented; it is about envisioning the future trajectory of technology and ensuring that the patent strategies are aligned with that trajectory. R&D technicians, patent attorneys, and marketing & sales people must collaborate closely, with all parties needing to understand the technology deeply and have a clear vision of its potential evolution. I have not seen such a promoting environment in three decades of my professional life as a patent attorney.
Some companies provide a step of hostile examination through “red teaming” — where one’s own team critically examines the invention disclosure from a competitor’s perspective — can identify potential loopholes and strengthen the patent’s defensibility. I have not seen surviving such initiatives for a long time.
While modern Patent Drafting Robots can help you to identify the appropriate language for wording broad claims, starting from picture claims, a lot of human wisdom and insight into upcoming technologies is necessary to develop the creativity needed for drafting patent applications that ultimately prevent “Getting Invented on Top Of” and “getting blocked for the future.” I am not confident that these strategies will become the norm anytime soon, but it is important to be aware of the issue. I can see that patent drafting robots can address this by using brute force methods. These methods randomly mix elements from prior art documents with the existing claims to create many different inventions and then simulate them to provide an enabling description. If a patent application is filed with such a massive amount of information, it raises the question of whether or not it constitutes an abuse of the legal system. But this can work.
What is not “Strategic Patent Tactics”
The following is a patent tactic that I have also seen,
Forecast Future Developments: Anticipate and patent potential future applications and technologies from what goes on in the patent filing area, not just current inventions.
In short words, this patent tactic leads into the realm of tea leaf reading and wishful thinking, and this is not a preferred place to be for patent attorneys. This is the area of IP managers with tools such as patent databases and analytics software for generating sophisticated reports that are based on big data science. These tools promise to help IP managers to search and analyze existing patents and patent applications and to provide insights into competitors’ IP activities.
IP managers tell me that they – by using these diagrams – can do the following:
- identify trends,
- find gaps in the market,
- position their own patent strategy to avoid patent infringement and
- identify potential business opportunities, and even
- discover areas where there may be opportunities to secure new patents.
Still, I cannot believe these IP managers because I know how their information is generated from inherently unreliable data. There is much noise in that data, and another problem is that the area of non-incremental innovation is non-linear, and that leads to systems with chaotic characters that are impossible to simulate long-term. My point is: can you draft and file specific patent applications based on evaluating patent landscape data from the past that turn out to protect non-incremental innovation? And the term “innovation” implies that it is a successful invention that produces profit. The answer is “no”. It is one thing to analyze old patent data to pick up trends as early as possible, and it is a whole different thing to actually use old patent data to predict the beginning of a completely new technical field that will end up being commercially relevant and even to word patent applications for that not-yet-existing technical field. One cannot be the first to file a patent application in a new emerging field based on parent analytics, but one can surely be an early adopter, and that is for many more than enough.
And being an innovator and inventor myself, I believe more in tangible substance than in fancy patent landscape diagrams: one paid sale says more about a product idea than a ton of old patent data.
When crafting patent applications, it is critical to have a forward-looking approach. Companies must strategize with the future market in mind. As technology advances, proficiency in drafting patents is essential. This skill safeguards current innovations and secures the liberty to develop new ones. In the competitive realm of technology, the capacity to anticipate and plan for future developments is essential to maintaining a leading position.
There is a belief among some that employing computer software to analyze the current patent environment and subsequently forecasting and patenting future breakthrough inventions is beneficial. Similar to what is promised for financial market prediction software. However, based on my three decades of experience in the patent industry, I have yet to witness the practical success of this approach in real-world application.