Working Within a Budget

Along the lines of the embedded patent attorney concept, I often work with my clients to develop a budget for patent protection, then map a strategy to get the best bang for the buck.

In all the companies where I had worked as an engineer, we merely came up with a zillion ideas, wrote them down, and the great and noble Patent Committee decided which to patent and which to keep as trade secrets. While this method is supposed to weed out the trivial patents, it often misses the strategic ones.

In mapping out a patent strategy, I like to think of the product in terms of its critical elements, which roughly correspond to claims in one or more patent applications that cover the core product.

The next step is to envision every single application of the product in the field, starting with the obvious uses of the product. We then look at variations of the usage model, including several “what if” scenarios. In the “what if” scenarios, we try to look at all the major components of the technology and implementation of the technology to see what would happen if that component were exceedingly expensive or exceedingly cheap.

For example, if we were looking at flash memory technology 10 years ago, it was a very expensive form of memory. However, if we thought about one of its limitations, cost, dropping extremely low, we may have been able to envision the USB memory devices and other uses for the memory.

Correspondingly, if we identified several cost factors in producing the product, we may evaluate the effects if one of the costs went through the roof. How would we design around the product in that case? How would the product have to morph? This is another way of asking how would you design around the existing product.

As we go through this process, looking at the product over the patent life of 20 years, often a handful of critical elements emerge that are very significant design around possibilities. These elements are the keys for protecting the technology.

The results of this process are a very clear picture of the technological and business landscape for this endeavor. It becomes quite easy to prioritize the key patents, and use that prioritization to determine when and where to file certain patents.

Another thing about this process is that many of the strategically important ideas that come out of the discussion are not found in the every day, run of the mill idea on an invention disclosure form. The strategically important ideas come to light only through this type of discussion.

It is almost never necessary to patent every little inventive idea in a product. By covering only the important elements, a business can get the most coverage for the least amount of money.

I should stress that getting to the point where the patent practitioner and the inventors/businesspeople can have this discussion takes a considerable amount of training and some mental preparation. Also, there are some people who are good at this type of interaction and others who are not. The people having the discussion must have the ability to think way outside the box, hypothesize radical scenarios, but also to ground it in business and technical realities. This does not happen very often, but when it does, it is magic.