Invention Diagnostic for a Patent Application – Part 3

What is the value of a patent?

It only makes sense to file for a patent if a customer will pay for the patented item and you can make a profit. If you can answer yes to this question then filing a patent application is a no-brainer since this affords effective worldwide cover for one year.

The value of the patent will ultimately depend upon whether the patent is effective against competitors. Effectiveness will depend upon patent policing strategies. The first strategy is to plan the patent specification with its policing in mind.

There are two sides in any patent dispute the patent owner and the patent challenger. The patent challenger will be trying to have the patent revoked.

How can a patent be revoked?

A patent can be revoked if it can be proven on certain grounds that are available, that it should never have been granted. A patent may be revoked in whole or in part.

It is very costly to have a patent revoked as the onus to prove the case is on the challenger. Often the main ground is “lack of inventive step” meaning that the invention is an “obvious solution to an obvious problem”.

The patent owner has the commercial high ground and does not have to go to any initial cost and can choose not to defend the patent once the challenger has gone to the high cost of building a case against the patent.

There are other “formal” grounds that relate to the written description and claims, these can concern for example incorrect drawings or not enough description of important features and really should be avoidable at the start.

How does a patent attorney mitigate against revocation?

There are no rights in an invention. The rights are in the document so the patent attorney plays a creative role. Unlike a solicitor or lawyer who looks after rights you already have, a patent attorney creates the rights for you.

The patent attorney tries to predict how a dispute might run and then write the patent with that in mind.

We call this “prospective hindsight” a bit like looking back on the future. A very tricky business indeed.

In other words the patent attorney will hypothetically take both sides in drafting the patent specification by considering what weaknesses he would exploit if he were the patent attorney for a competitor trying to have the patent revoked.

In particular the patent attorney will draft a range of claims to cater for various fall back positions based on the information you have given or questions you have answered . Often the patent attorney will create new words for things so that they are not tied to particular meanings known in your industry. If something is known in the art as a “grommet” a patent attorney might call this a “passage means” so that it will not be limited to a specific thing. A patent attorney might deliberately use certain words in a claim to alter the meaning and scope of words in other claims and thereby gain an advantage for you. A patent attorney might include various options to make an important feature variable to cover more possibilities. The patent attorney might conduct a search and reference certain documents in order to place your invention in the best possible “legal light” or “head off” possible patent examiner objections. 

This diagnostic will assist in all this planning.

What is a problem/solution analysis?

Your invention will satisfy a need or want. In order to satisfy that need or want, problems will be solved in producing the commercial product. All of the solutions to those problems will either independently or in combination contribute to the invention.

Your competitor will want to adopt some or all of those solutions.

In order to protect those solutions we need to identify them, hence the problem/solution analysis.

Where you considered various options before selecting a particular solution it is important to let the attorney know, this means you had to choose from these possibilities and you were not “directly lead” to your solution. This information is useful to the patent attorney as it helps to understand your “inventive” approach and will help the attorney to appreciate the invention and avoid “hindsight” and structure the patent specification accordingly.

What is an analysis of advantages?

Solutions to problems have clear advantages. However sometimes there will be advantages that are difficult to specifically relate to a particular problem. There might be a particular advantage in employing a particular material. We still need to identify and capture these as your competitor will want these advantages as well.

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