Many entrepreneurs and business owners want patents that will defend their company against competitors, but few companies actually have a proactive plan for investing their patent assets wisely.
To defend your company, you want patents that are (1) litigation worthy and (2) relate directly to your company’s products and services.
Litigation worthy patents are not the garden variety patents that you get from your local patent attorney. The primary goal of the litigation worthy patent is to get a good examination. This means presenting the invention clearly and succinctly so that the examiner grasps the invention and can do a good search. The second goal is to avoid all of the many pitfalls that can sink a patent in litigation, such as avoiding patent profanity, providing too little (or too narrow) support for variations, and many others.
A good examination also means being particular about the claims and avoiding many prosecution mistakes. The examiner may propose amendments to the claims to allow the case, and your local patent attorney may be very tempted to take the examiner’s suggestions. The easiest way to please a client is to get a patent allowed, but the examiner’s suggestions may severely limit the claims when it comes to litigation and enforcement.
A patent attorney who has the client’s latitude and support to fight for enforceable claims is a very rare situation. Typically, a patent has been pending for many years and there is finally a hope of having a patent granted, the client is tired of spending more and more money, and there is very little patience or tolerance for spending even more money on the patent, which still may never issue.
The litigation worthy patent must also read directly on a competitor’s product when they enter your marketplace. Since the patent tends to be issued many years after drafting, it is critical that the claims track any changes to product strategy.
Tracking product strategy means that the patent attorney must be involved in new changes to the product so that changes may be made during patent prosecution. It also means that the changes/pivots/improvements/pitfalls of the product should be discussed and included in the original patent application. Only when these options are available to the attorney during prosecution can the claims be adequately amended to track improvements to products in the marketplace.