Intellectual Property

According to the United States Patent and Trademark Office, only half of all patent applications submitted for review are eventually granted protections. While that isn't completely discouraging, a Yale University study revealed that a non-final rejection is given to more than 86% of newly filed patent applications—drastically reducing the likeliness of receiving a patent on the first try.

Even the most experienced inventors and patent attorneys know that navigating the patent application process can be challenging and filled with subtleties and nuances. Revisions are often required in order to achieve that perfect balance of a not too broad/not too narrow claim.

Achieving that balance is an art and takes close cooperation between the inventors, who are often technical experts with less experience in patent law, and the patent lawyers, who are legal experts but may have limited understanding of the technology and technical field. Often, a patent lawyer must encourage a reluctant inventor to think more broadly about their inventions so that the patents can cover the broadest range of possible implementations while an inventor must ensure the technical integrity and novelty of the patent remains intact.

Those two viewpoints do not need to be at odds, especially if inventors keep in mind three things that may help them obtain the best protection for their innovations and avoid multiple rounds of meetings and edits that inevitably raise patent costs.

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Broader is Better (Except When It's Not)

The claims portion of the patent application defines what the patent does and does not protect. Inventors often think that a patent claim should describe their specific implementation or a highly optimized design. However, specific claims that describe exact implementations and includes lots of not truly necessary steps are typically narrow and easy to design around. Broader claims that describe the simplest or most generic implementation, the essence of the invention, if you will, and that allow for the most variety in realizing the invention often provide broader and therefore more valuable protection.

If you are inventing in a developing market, a broad patent can be especially valuable, enabling you or your company to have ownership over a wide range of solutions that competitors won't be able to design around, forcing them to take a license from you or risk an infringement lawsuit. However, there are several risks associated with going too broad. For example, there's a higher chance of rejection for not satisfying the requirements for patentability because of the increased likeliness that your broad claim covers previous implementations or other prior art. While you can revise your claims as part of the prosecution process, correspondence back and forth with the patent office increases patent costs and can delay the issuance of a patent.

Broader claims also may be more difficult to enforce if the terms of the claim wind up being defined (during claim construction) as something other than what you intended. Both claim construction and an overly broad interpretation of issued claims may increase the likelihood of prior art being exposed during the litigation which could result in a patent being found invalid after you have initiated a lawsuit.

In a mature marketplace where everybody's products are different variations on a somewhat standard design, a narrower set of claims can also prove valuable, especially if that claim includes even one new, and hopefully market-differentiating, step or component compared to the prior art. The danger of very narrow patent claims is they only protect the very specific implementation of the product claimed and leave room for people to design slightly different implementations that do not infringe (freedom to operate).

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Language Matters

Patent attorneys know that language matters when drafting specifications and especially claims, and that patents are legal, rather than technical, documents. However, as inventors, we are often reluctant to use terms or phrases that we would not see in a journal publication or textbook.

However, the words written in the claims and the support for the interpretation of those words in the specification are often the determining factor in the outcomes of infringement cases. To provide truly invaluable service, lawyers should take the time to make sure we inventors understand that should our patent ever be litigated, every word in the claims will be scrutinized by the legal teams on both sides of the case and by the court. Sometimes the definition of words that we would not even consider technical in nature, such as "treatment" (see BTG International Limited v. Amneal Pharmaceuticals) become the determining factor in what our patents do and do not protect.

At the end of the day, we need to understand that in an infringement lawsuit, a jury of everyday people are going to evaluate our patents and decide on the ultimate validity of the patents and whether another company infringes them, meaning that people with little or no previous knowledge of a technology or a technical field have to be able to understand and interpret the language of the patent to effectively gauge, and assess, the situation.

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Keep in Mind Where You're Filing

Clients can get a lot of value from filing IP abroad, especially in high growth markets. The Apple vs. Qualcomm lawsuit from 2018 is an example of just how valuable international IP can be when it comes to being able to stop counterfeiters and infringers abroad. In the United States, infringement cases usually result in damages being awarded to a plaintiff if the defendant is found to infringe, but in other countries, such as China for example, the much harsher remedy of an injunction is available if infringement has occurred. Ultimately, injunctions are more valuable to companies, since they stop the infringer from using, selling or making the infringing product or products, taking those products out of the market and restoring the market advantage and the associated profits and market share to the patent holder.

Until recently, the costs of foreign filing were prohibitive, especially for universities, small companies, and individual inventors. However, that trend is changing in at least one country, China. Over the past decade, China has built out its patent and other intellectual property prosecution and litigation capabilities and local service companies that specialize in translation and building IP portfolios have sprung up. These companies can offer patent services and translations at substantial discounts compared to traditional law firms and are helping to fuel the incredible growth of patent filing and litigation in China.

In the end, intellectual property protections are an essential part of any business' growth plans. By working together and understanding each other's viewpoints and expertise, inventors and patent attorneys can develop patents with claims broad enough to be valuable that can withstand the scrutiny of litigation. Inventors can then take the patent applications they worked so hard to write and file in the U.S. and very cost effectively file them in China, to secure protection in what is rapidly becoming the largest patent office in the world.

Katie Hall is a researcher, entrepreneur and teacher with a passion for invention and increasing women's contributions to science. Currently, she's the chief intellectual property officer at Ciprun Global and has held several other leadership roles over the course of her career, including CEO of Endeveo Corporation; chief intellectual property officer of Speedy Packets; chief strategy officer of Origin Wireless; CTO of WiTricity Corporation; founding partner of Wide Net Technologies and CTO of PhotonEx.