How to Own Higher Quality Patents

Lots of large high-tech companies rely on a high-volume patent filing strategy. For example, industry titans like Google, Microsoft, and Apple receive thousands of new patents each year.

Large companies have the financial resources and dedicated personnel to file as many patent applications as possible. But tech startups can’t compete on volume, primarily because they don’t have the resources. Instead, a smarter strategy for tech startups is to own a portfolio of high-quality patents that will hold up under close scrutiny.

But what are the marks of a high-quality patent — and how can you ensure that your patents meet that standard?

What Is a “High-Quality Patent”?

Although there’s plenty of room to debate the defining attributes of patent quality, most people would generally agree that a high-quality patent is one that covers the important aspects of an invention, is properly vetted by the patent office’s examination process, and will withstand a high degree of scrutiny in an adversarial setting.

HOW TO IDENTIFY A HIGH-QUALITY PATENT

While there’s no well-defined standard or signature of a high-quality patent, there are several proxies for identifying one.

First, a high-quality patent will typically have many of the following characteristics that can be observed from the patent’s structure:

• Broad (short) independent claims
• Many detailed dependent claims
• Long specification with thorough technical detail
• Many cited references
• Large patent family with foreign and pending applications

Second, a high-quality patent will minimize the risks that are associated with the patent itself and intrinsic to the patent process. (We’ve written a separate blog post on how you can minimize these “intrinsic patent risks.”) To summarize, minimizing intrinsic patent risks means avoiding pitfalls related to:

• Design-around – can competitors easily avoid the patent?
• Validity – could the patent be invalidated by prior art?
• Enforceability – could ownership of the patent be challenged?
• Scope – could the claims be misinterpreted?

Third, a high-quality patent should strongly align with practical business considerations like:

• Can the patent be adapted to relevant foreign jurisdictions?
• How easy is it to detect or prove infringement based on public information?
• Will competitors be able to understand the patent’s relevance?

“HIGH QUALITY” VS. “HIGH VALUE”

Keep in mind that “high quality” is not the same as “high value.”

The value of a patent is often subjective to who owns it. Different companies have different business goals, which means that a high-quality patent may add significant value for one company while adding zero value for another. As such, it’s difficult to assign an objective “value” to a given patent — it typically depends on context.

How to Own Higher Quality Patents

To own stronger patents, start with the following six steps:

1. File High-Quality Patent Applications

For a tech company that’s actively developing new technology, filing high-quality patent applications is the most critical step toward getting high-quality patents. In other words, high-quality patents begin with high-quality patent applications.

For that reason, it’s important to implement a robust patent drafting and filing process that systematically produces robust new patent applications throughout the innovation process. Here are some key ingredients to a strong patent process:

• Take an iterative approach to completing invention disclosure records (IDRs): Before your IDR goes to outside counsel for patent drafting, make sure it passes through multiple rounds of review within the company, and multiple rounds of revision by the inventors.
• Internally review citations for quality assurance: Cite all relevant prior art to reduce the risk of encountering unexpected prior art during prosecution or after issuance. (If you identify someone in your company who’s really good at finding prior art, make it part of their job!)
• Map the invention to the company’s technology roadmap: Avoid filing overly broad claims; you should know what parts of the company’s technology the patent is supposed to cover.
• Use your time wisely: Patent applications are long, complex documents, so you need to allow adequate time to develop a patent application in order to obtain a stronger end product. So don’t wait until the last minute to file patent applications (yes, even provisionals)!
• Partner with the right outside counsel: Engage patent attorneys with the right technical background to understand your technology and a proven track record of crafting high-quality patent applications. (Here are 22 qualifying questions to ask before hiring a law firm.)

2. Actively “Prune” Redundant Patent Filings

As your business and the market evolve over time, certain patent applications may decline in value or importance. When that happens, don’t be afraid to move on and focus on the most relevant patents. You want your core patent team and budget focused on the tasks that will best serve your business goals.

It might help to consider patent applications as an option that you will or will not exercise, rather than an investment to be maintained no matter what.

When is it time to assess the usefulness of an existing patent or application? Common “pruning points” in the life of a patent include:

• One-year foreign (PCT) filing decision
• 30-month national stage filing decision
• New search reports or office actions
• When maintenance fees are due

3. Focus on International Filings

Consider foreign patent protection from the very beginning — not as an afterthought. Not only does this help you to keep all options on the table, it can also help you to file a stronger patent application.

For one, foreign patent office searches may turn up more prior art, including documents in other languages. This reduces your chances of encountering unexpected prior art obstacles later on.

For another, in case your U.S. patent is questioned or challenged, foreign patents may provide a “backup” venue for patent enforcement.

4. Manage the Prosecution Process

You want to ensure that your patent prosecution process is well-managed — especially when it involves inventions that could increase in value or importance.

What does strong management entail? For starters:

• Mapping claims to products throughout prosecution: Ensure your claims are aligned with key market opportunities.
• Filing continuations to preserve flexibility: After filing an original patent application, you can refile the application with a different claim set to cover alternative embodiments (including your competitors’ products).
• Creating “blue teams” to review your applications: Have an internal team in your company attempt to challenge the validity and scope of your claims — this will reveal any existing weaknesses in your applications.

5. Consider Trade Secret Protection

Will it be tricky to detect infringement in the market for your invention? Can your invention be kept secret?

Consider pursuing trade secret protection: Trade secret protection requires practically zero cash investment and very little administration, which means you can focus your human and capital resources on obtaining other, more easily enforceable patents.

Alternatively, if your invention isn’t eligible for trade secrecy, you might consider defensive publications to create prior art and prevent your competitors from getting a patent.

6. In-License Patents from “Non-Competitor” Sources

Finally, not all high-quality patents have to be “home grown.” Patents are transferrable property, which means that you can buy patents (or acquire rights in them) from third parties. Consider purchasing or in-licensing patents from entities that aren’t your direct competitors, such as universities.

Why? Many universities primarily want to see their technology commercialized by an industrial partner, and they often don’t have the same incentives that a direct competitor would have. For example, a university might be happy to grant you a non-exclusive license in exchange for a cash payment or projected royalties that would cover their costs in obtaining the patent.

This move could benefit your business in two ways. As discussed earlier, a patent that’s less valuable to the university might be more valuable to your company. In addition, in-licensing may turn out to be less expensive than filing a new application yourself!

Owning Higher Quality Patents: What You Should Prioritize

Want to implement a quality-focused offensive patent program at your company? The following table summarizes what to prioritize when deciding what to patent and how to craft your patent claims:

	Higher priority	Lower priority
Claim coverage	Covers your product	Covers competitor’s product only
Claim scope	Diverse mix of broad and narrow claims	Either only narrow/implementation-specific claims available, or only broad claims available with no implementation details
Type of invention	Inventions within company’s core technical expertise	Technical areas where company does not have core expertise
Level of detail in specification	Thorough technical descriptions	Short or non-technical disclosures
Ease of detecting infringement	Easy	Difficult

Easily Document Your Company’s Intellectual Property

To draft higher quality patent applications, you’ll need to keep track of important information about your invention, public disclosure dates, and any known prior art sources. Our FREE IDR template makes it easy to document your employees’ contributions — download it now!