This is a second part of a series on different patent drafting styles. The first post dealt with protecting an existing product. The final post deals with developing a portfolio with intent to sell a company.
Patents that are intended for licensing have a distinctively different feel to them and a different method of drafting. Here, our intent is to protect an idea that may potentially be more valuable at the end of the patent life. In this circumstance, we are unable to predict where the technology may change.
Rather than focusing on a product or opportunity, these types of patents identify a concept and develop as many variations or configurations of the concept as possible.
When I draft these types of patents, I carefully work out the claims first, before anything else, and make sure we capture the essence of the idea.
Because the resulting patent should be as strong as possible, I generally recommend searching as much prior art as reasonable, using the initially drafted claims. Based on the search results, the claims may be modified slightly or could be completely rewritten to avoid any prior art. In some instances, this process may be reiterated several times to find some areas that have not been covered.
This type of patent application differs from the patent used to protect an existing product in that there are not a lot of defensive disclosures and that the claims are tailored to the prior art rather than an existing product. The effort is to build a legally strong and defensible patent that can be used to offensively extract license royalties.
After the claims survive the search process, the specification is written to correlate directly with the claims and to fully support the independent and every dependent claim. In some cases, the application may not include all of the claims originally drafted, as the sheer number of claims may be too many to file, but the disclosure will always cover all of the known claims.
The useful life of a licensing patent is hopefully the full life of the patent. For technology that is readily adopted and becomes integrated into the marketplace, the highest value of the patent is often in the last few years of its life. This must be kept in mind when choosing words to describe the invention, as the assumptions one makes in today’s world may not be true 15 years from now.