Patent Strategy

Designing a Patent Strategy

To a very large extent, a patent attorney can craft a strategy for a patent that aligns with the business goals of a client. From my experience, very few patent attorneys/agents bother with such things, but it can make a very big difference, especially in some business situations.

BlueIronIP is a patent financing group that specializes in patent strategies for startups and medium sized businesses. BlueIronIP uses a “patent due diligence” process to determine the best strategy for your business, as well as to evaluate individual inventions.

Claiming Strategy for a Patent in Real Business Applications

One of my clients was complaining about how difficult and expensive their last patent was when it was handled by a big firm. Sadly, this is not an uncommon story, where the inventor had to suffer through several revisions of the initial application because it was technically incorrect and was missing many essential elements of the invention.

The problem was exacerbated when the response to an Office action was handed off to someone unfamiliar with the case, and the inventor essentially did all the background work to present their case to the Examiner. Oh, and by the way, over $180,000 was spent prosecuting the patent. (The Big Firm billed by the hour, too.)

Not only is this story one of utter incompetence, clearly excessive billing, but it is one of poor claiming strategy.

Another Use For Provisionals

Provisional patent applications give the inventor the right to label a product “Patent Pending”, which can have enormous business effects. The mere label of “Patent Pending” can be enough deterrent to keep competitors out of a business arena.

Provisional applications can be obtained with very little disclosure. In theory, a cocktail napkin with a figure and a little description may even suffice.

Your Competitive Advantage May Not Be Your Intellectual Property

As much as patent professionals like to harp about the advantages of patents, copyrights, or trademarks, it is also like asking a barber if you need a haircut.

Use Patents to Protect a Business, Not to Protect an Idea

Are you selecting the right things to patent? It is okay to start with the Big Inventive Idea, but look at the business as a whole to select what actually gets protected.

People come to me with inventive concepts that they want to patent. The engineer or inventor in them relishes the “cool factor” that comes from that incredible moment of conception of the concept. My experience is that the excitement and euphoria over the invention is often palatable years afterward. In fact, there are several of my own inventions that to this day bring goosebumps when I think of that very moment when I came up with the concept.

These concepts are often the ones written up in invention disclosures or used by the independent inventor to start a business.