HOW TO OWN HIGHER QUALITY PATENTS

Lots of companies in the tech industry rely on a high-volume patent filing strategy. For example, industry titans like IBM, 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. Instead, a smarter strategy for tech startups is to own a high-quality patent portfolio containing claims 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”?

Reasonable minds will differ on the fine details of what constitutes a “high-quality patent”. But most people would generally agree that a high-quality patent is one that  covers a meaningful invention, is properly granted by the patent office, and can’t easily be struck down in an adversarial setting.

HOW TO IDENTIFY A HIGH-QUALITY PATENT

While there’s no well-defined standard or signature of a 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:

• Short independent claims
• Low linguistic redundancy in claims
• Many detailed dependent claims
• Long specification with thorough technical detail
• Many cited references
• Many forward citations

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.”)

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

• Can the patent be adapted to relevant foreign jurisdictions? (Here’s some recent data.)
• 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 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 all depends on context.

HOW TO OWN HIGHER QUALITY PATENTS

To own stronger patents, your company needs to make smart strategic decisions that maximize its finite resources — starting with the following six steps:

1. IN-LICENSE PATENTS FROM “NON-COMPETITOR” SOURCES

Consider purchasing or in-licensing patents from entities that aren’t your direct competitors, such as universities.

Why? Many universities just want to see their technology being commercialized, and won’t aggressively pursue profitability in licensing deals. For example, a university might be happy to grant you a non-exclusive license in exchange for a cash payment 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 the application yourself!

2. FILE HIGH-QUALITY PATENT APPLICATIONS

High-quality patents begin with high-quality patent applications, which is why you want to implement a robust process from the very beginning:

• 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.)

3. 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:

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

4. 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.

5. 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 amend your claim set to cover alternative embodiments (including your competitors’ design-arounds).
• 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.

6. 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.

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!