I vary the drafting style of a patent application based on the client’s business needs. Based on the client’s short and long term needs of the patent, the resulting patent may take on significantly different looks.
Among the different styles are patents directed toward a specific existing or potential product, patents intended for non-exclusive licensing to several licensees, and patents intended to build up a portfolio for eventual sale of a company.
Today, I will look at the first style: patents intended to cover a specific product.
Many clients have an existing product and want to get patent protection for the product. In this case, the business interest is two fold: prevent competitors from directly infringing the product going out the door and as a defensive use to create as much prior art as possible in the market space.
Patents in this category tend to define the product in a lot of detail, with as many options and variations of the product as possible. The claims are drafted by picking out the most important features of the product. Often, several independent claims may be needed to cover all the possible variations of the product that, from a business standpoint, we wish to prevent from entering the marketplace.
The specification for product-protection patents may have a lot of extra material that has a defensive use. This creates prior art for any competitors that may write patents on similar products in the future.
When I write these types of patents, the discussion with the inventor and business manager include competitor’s products, what the next generation or two of the existing product will include, and which features of the existing product give it a competitive edge. We start with the competitive advantage of the client’s products as compared to the competitor’s products, then map the future upgrades or changes to the product, and envision how the competitors will respond, all the while focusing on protecting the client’s core competencies and strengths.
Often, the timeframe envisioned for these types of patents are two or three product cycles. Because the products may evolve significantly over time, the business manager must understand that a majority of the patent protection will be in the initial two product cycles and may diminish over time.
This type of patent protection requires a large amount of input from the business and marketing side of the client, and not just the technology side. Without the marketing information, critical issues may be overlooked and the patent may have much less value to the client than it could have.