Inventors like to think that their patents are “broad” and somehow that is good. It is not.
The risks with broad patents are that they are more easily invalidated, but it is basically a sales pitch that patent attorneys use to make more money.
Narrow patents are bad, too.
Narrow patents are bad in the sense that they are easy to design around, but that really speaks to the weakness of the underlying idea (or the patent attorney’s inability to negotiate successfully with the patent examiner.)
A broad patent has a large surface area for attack. With the advent of Inter Partes Review, broad patents can be relatively easily invalidated.
Patent myths of “broad” patents are something that patent attorneys like to tell their clients. It makes the client feel like they are getting something of value, but it is really setting up the client to pay huge amounts of money during the patent prosecution phase – the examination phase. We will discuss this more in the section about the attorney/client relationship, but in general the patent attorney makes twice as much during the examination process as they make when they write the patent.
If the attorney can set up a client to believe that “broad” claims are necessary, the attorney can start with obnoxiously broad claims with the expectation that the examiner will reject them. Then the attorney gets paid to make an amendment, but not narrow the claims too much to guarantee another rejection, and the cycle continues. In the industry, this is known as the Gift That Keeps On Giving.
Remember that the patent attorney has a financial interest in NOT getting a patent. Once the patent issues, the revenue stream ends. Why does it often take 3, 4, 5 years or more to get a patent? Think about who has a vested interest in making it as long as possible. By the way, the patent examiner also has a vested interest in prolonging the examination process, too.
Investment Grade Patents have targeted scope. We do not want them too narrow or they are easy to get around, but we also do not want them too broad or they will not withstand litigation.
Just like Goldilocks, we want the patent to be just right.
One strategy that we use at BlueIron is to ask for claims that are reasonable and justifiable. Because we have done patent searches ahead of time, we have a good idea about the allowable scope of our claims. Because we have done the due diligence beforehand, we also are comfortable with the value of the asset we are creating. During prosecution, we also have a set of standards for evaluating any amendments to ensure that our claims still meet our business goals.
One side benefit of asking for reasonable claims is that the examination process moves very quickly. Since we are financing the cost of the patents, we do not need to incur any unnecessary expenses. We also use the Patent Prosecution Highway whenever possible, so we are typically negotiating directly with an examiner when we have the bargaining advantage. By being reasonable and having a justified position, that negotiation is far more productive than demanding “broad” coverage when you are not entitled to it.