Invest Time In Your Patents!
A CEO of a biotech startup was telling me that he is really happy with his current patent attorney. I was struck by his enthusiasm!
What has this patent attorney done to deserve such loyalty?
When I asked why he was happy, his response was that his patent attorney is really good at delivering the finished patent application with minimal input from the inventors.
They send the patent attorney an invention disclosure. They receive a finished patent application ready for approval from the inventors.
His words sent chills up my spine!
That’s like being thrilled with a surgical consultation because the surgeon got you out quickly and didn’t ask a lot of probing questions! The surgeon may have saved you time, but shouldn’t you be more concerned about the success of the surgery?!
Knowing what I know about patent claims, I wondered if there is any chance that his claims will protect his invention. Knowing what I know about startups, I wondered if his company will be around in a few years.
This is the seventh post in my series “How To Protect An Idea: A Guide For Scientists, Engineers, Inventors, And Business Leaders To Understand Patent Claims.” If you read my second post, then you know that only the claims section of issued patents can be used to sue for patent infringement. If you read the third, fifth, and sixth posts, then you have a few tips for reading product and method claims.
This post discusses…
How Can I Prevent Design Around?
The simple answer is: you probably can’t.
However, you can avoid making it easy for competitors to do so.
In exchange for your disclosing your innovation to the public, a government will grant you a patent that allows you to sue others for using or selling your invention without your permission. The purpose of the patent law system is to encourage the public disclosure of innovation, not to protect you from competition.
This may seem like a subtle difference, but it is a critical one. Patents and their claims are published so that competitors can learn from your innovation and avoid infringing your claims. The system is designed to encourage your competitors to innovate and market non-infringing products and methods.
But honestly, do you care what the patent system is designed to do?!
The purpose of the inventor and/or patent owner is to use their patent to protect a competitive advantage in the market place. Therefore, your goal is to draft claims that force competitors to innovate as much as possible to get around your patent claims.
The term “design around” is popularly sneered and commonly used when referring to some minor change that allows a competitor to avoid infringing the claims of your patent.
The worth of a patent depends on the competitive advantage it confers in the market place, which depends on how easy it is to design around. If your competitors can essentially copy your invention with a minor tweak to your product or method, then your patent is worthless, except possibly as a marketing tool.
If your competitors are forced to alter the product or method in a way that makes it difficult for them to compete, then the patent confers a competitive advantage. For example, your competitors may have to spend so much time and money to research their product that they can’t undercut your market price. Alternatively, your competitor may have to alter the product so much that the product cannot successfully compete in terms of the advantage of your product.
If your competitors cannot come up with any competing product or method that does not infringe a claim of your patent, then your patent grants you the competitive advantage of a monopoly. Enjoy!
How Can I Avoid Design Around?
As I have mentioned, the best way to avoid having a competitor easily design around your claims is to consult an experienced patent attorney regarding the scope (coverage) of your claims.
This requires two things: effective communication and focus.
To understand how to communicate effectively with your patent attorney, you need to understand a few things about legal culture. First, large law firms are billing machines that are designed to make as much money as possible for their partners. They are in the business of selling trust and the illusion of perfect legal services. Selling this image requires a lot of posturing.
For example, many patent attorneys will go out of their way to avoid admitting that they do not understand your technology as well as or better than you or your inventors. However, unless their graduate studies or work experience were in your exact technology, your inventor will almost always understand your technology and your invention better than your patent attorney. If you do not believe me, try quizzing your patent attorney on some technical trivia!
As patent attorneys, our job is not to know your technology better than you or your inventor. Our job is to guide you, your inventors, and your business safely through the maze of patent law.
- This knowledge means that you need to spend time considering all of the possible variations in design that your competitors might come up with.
- Then you need to ask your patent attorney if your claims would cover that possibility.
Patent claims are not designed to protect ideas or generalizations. They are designed to grant the owner the exclusive right to market a product or service.
The first step in avoiding design around is to visualize as clearly as possible the exact product or method that you plan to use or bring to market.
Ask your patent attorney if your claims will cover that product or method. This step should ensure that your claims cover your intended product or method.
The second step will be to try to envision improvements and manufacturing considerations. Your first conception of your invention may not be the best one to take to market. You may find that as soon as you talk with suppliers, industrial manufacturers and designers, your business unit, regulatory people, and/or marketing people that your first draft of the invention is not commercially feasible.
Keep visualizing and re-visualizing the exact product or method that you plan to market or use until it becomes commercially viable.
Ask your patent attorney if your claims will cover that commercially viable product or method. This step should ensure that your claims cover the product that you will actually sell.
The third step in avoiding design around is to then picture the exact products or methods that your competitors might develop to compete with you. Ask your patent attorney if your claims can be drafted to cover that product or method too.
The Value of a Patent
The value of a patent usually depends on two factors. First, your innovation must confer a commercial advantage in the market place. No customers = no money. Second, the value of the patent will rest on your ability to enforce the patent to exclude others from practicing your invention. This protection is why patents can be your most valuable IP assets.
A useless patent is one where your innovation provides no advantage in the market place, or your competitors can make a minor change and avoid your claims.
A moderately valuable patent is one where the claims force your competitors to spend significant time and money to design around your patent.
The most useful patent is one where your competitors are forced to spend so much time and money trying to design around your claims that they are essentially forced to come up with their own invention. In doing so, they may lose most or all of your commercial advantages. They may also end up being forced out of direct competition.
In the movie “300,” the Spartan king, Leonidas (Gerard Butler), figures out the exact pass in the mountains that his enemy needs to march through to invade his land.
He positions his army of 300 soldiers in the mountain pass, because if you control the only pass, you control access to your land.
Defend the bottle neck and you defend your property!
Block The Bottle Neck!
In my experience, I find that the strongest patents are those where the science, the application, and/or regulations severely limit design around. The only paths through are like passes in the mountains.
For example, patent claiming new drug molecules can be very difficult to design around. First, design around is limited because only certain chemical combinations are possible, and their properties are usually difficult to predict. Second, the application requirements for drugs are strict, because the body’s drug receptors are highly selective. Third, and most importantly, the Food and Drug Administration (FDA) only approves one molecule at the cost of one to two billion dollars.
The only way that competitors can design around an FDA approved drug molecule is to pay their own one to two billion dollars for regulatory approval!
When trying to prevent design around, look for science, the constraints of the application, or regulations that will effectively limit most design around efforts . . . and then claim the remaining paths.
Find the bottleneck!
Defend the bottleneck!
The next post in my “How To Protect An Idea: A Guide For Scientists, Engineers, Inventors, And Business Leaders To Understand Patent Claims” series will cover “Conclusion.” Click here for the next post.