In part 1 of this 3 part series, I discussed “Inherent Waste,” and that it is a generally accepted cost of doing “patent business.” Inherent Waste includes patent applications that never issue and issued patents that are never used (i.e., Low Quality Patents).
In this part 2 of the series, I’ll discuss one of the two primary causes of Low Quality Patents, and in part 3 of the series, I’ll discuss the other.
I call the first primary cause “ineffective patent strategy.” Let me put “patent strategy” into context. A patent has a term of twenty years from its priority date (with payment of the maintenance fees). A patent application has to be filed before the invention is made public, which is typically years before the commercial success of the product in which the invention lies is known. There are currently over three million active issued patents. A patent only has value if at least one other entity wants to use it.
We are trying to decide today whether other entities will want to use a particular invention over the course of the next twenty years in a sea of three million patents. And, if they do want to use it, can we detect their use? This is a virtually impossible task to do with any level of certainty. Thus, we accept being wrong much more than we are right.
Ineffective patent strategy is further compounded by a limited understanding of the “complexity of invention.” Complexity of invention is my term for expressing the challenges of 1. Identifying what inventions to disclose, 2. Determining what inventions to patent, 3. Determining the scope of inventions (e.g., Invention hierarchy (e.g., system level, minute detail, etc.) and Invention diversity (e.g., new uses within supply chain, enable new products, etc.)); 4. Determining the type of invention (e.g.,, fundamental, commercially necessary, commercial expansion, specific embodiment, targeted embodiment), and 5. Determining how to patent protect selected inventions.
A further compounding effect of inefficient patent strategy is the inconsistency and varying content of invention disclosures by engineers. Some engineers hate the patent process and only submit invention disclosures when forced, a few engineers like the patent process and submit invention disclosures all of the time, and most engineers are in the middle. Further, an engineer is typically creating a specific solution to a specific technical issue, and, if the engineer chooses to disclose it, discloses the specific solution with little consideration to the complexity of invention.
As such, a typical company ends up with 1. An imbalance of disclosures (e.g., too many from some technical groups and too few from other technical groups); and 2. Too many specific embodiment inventions with narrow invention scope (i.e., not enough fundamental, commercially essential, and commercial expansion with a range of invention scopes). From this imbalanced set of invention disclosures, the company tries to decide which ones of them will likely be used by others in the next twenty years and, if likely, can it detect others’ use. This is the generally accepted approach to patent strategy that produces the generally accepted “we’ll be wrong more than we are right” mentality.
Like Inherent Waste, we have proven that ineffective patent strategy is not an inevitable consequence of doing “patent business.” It can be substantially overcome.
If you work for a small company and are filing patents, ask your patent counsel what they are doing to combat ineffective patent strategy. If they don’t have an answer, consider finding new patent counsel.
*Please note that this article is not legal advice; it is not a legal opinion; nor should you rely on it as legal advice or as a legal opinion. This article merely expresses the author’s general thoughts on a topic regarding the business of patents. Nothing in this article establishes any form of an attorney client relationship between you, the reader, and the author of this article.
