Patent Procurement and Strategy for Business Success: Building and Strategically Using Patents that Target the Right Infringers and Thwart Competitive Countermeasures

By Reginald Ratliff
June 9, 2021

“Multi-dimensional invention framing, scope of protection preservation, targeting the right infringers, and wielding an invisible hand are techniques that can be used in preparing and prosecuting patent applications to secure patents that implicate infringers of inventions that are important to the success of businesses and  that help thwart the measures competitors may use to avoid infringement.”

patent strategies - https://depositphotos.com/5850440/stock-photo-business-strategy.htmlSuccessful patent strategies for business are inexorably tied to the quality of the patents upon which the patent strategies depend. The quality of a patent depends upon the capacity of a patent prosecutor to resolve a series of non-trivial patent application drafting and/or examination challenges in order to secure the issuance of a valid patent that includes claims that provide a desired scope of protection. Such challenges can involve subjecting complex and/or unwieldy subject matter to patent form in a manner that yields an accurate, clear and complete detailed description of the invention and well-crafted claims. Moreover, they can involve managing difficult patent examiners who require the amendment of claims as a prerequisite to advancing the prosecution of the application. The detailed description and the claims are the parts of the patent that can be employed by the practitioner to imbue a patent with attributes that optimize their support of patent strategies for business.

In the following discussion, strategies for use in drafting applications and managing their examination to obtain patents built to support patent strategy for business, styled herein as multi-dimensional invention framing, scope of protection preservation, targeting the right infringers, and wielding an invisible hand, are described. Patents prepared and secured using these approaches can be used to implicate infringers of inventions that are important to the success of businesses and to help thwart the measures competitors may use to avoid infringement.

[[Advertisement]]

Multi-Dimensional Invention Framing

Inventions that have a multi-dimensional character require multi-dimensional framing in order to adequately reveal the structure, operation, and utility of the inventions. Multi-dimensional invention framing is an invention description approach that is characterized by a multi-faceted description of inventions that directly details their dimensional attributes. In many cases, such as those involving software and electronic inventions, multi-dimensional invention framing provides descriptions of attributes of at least the environmental, structural, and functional dimensions of the invention. Describing inventions in this manner ensures that the invention as a distinct system, device, method, etc. with distinct structural and functional dimensions is accurately and clearly communicated. Moreover, it ensures that these important dimensions of the invention are directly addressed such that their descriptions can be fully developed. Encyclopedia articles that describe complex organisms are illustrative of the effectiveness of a multi-dimensional description approach. For example, encyclopedia articles that describe lions generally include descriptions of their anatomy, habitat, and behavior in the habitat. The inclusion of this range of subject matter is necessary to help provide a complete understanding of lions to article readers. In contrast, an article about lions that focuses on a lion’s anatomy, while ignoring other subject matter, no matter how well written, would obviously be insufficient to adequately describe an animal as complex as a lion. For example, if the article concerns lions from Serengeti national park and is based on a study of a specimen’s anatomy done in a laboratory setting, the article would clearly need to be supplemented with content that describes the lions’ behavior in Serengeti national park (their natural habitat) in order for the living, breathing and functioning lions to be understood. In a similar manner, the inclusion of an invention’s environmental, structural, and functional dimensions in the detailed description of the invention breathes life into that description in a way that enables the invention to be more fully understood. As such, as a part of preparing the detailed description, the application drafter should make a point of identifying all of the dimensions of the invention (those noted herein and/or others that the application drafter may identify) that they deem necessary to fully understand the invention. In this manner, the application drafter can ensure that the resulting detailed description includes descriptions of all of the dimensions of the invention that are necessary to fully understand the invention based on an actual consideration of the matter. This process, along with the steps that the application drafter should take to understand the invention, and its parts and function (before endeavoring to describe the invention), enables the application drafter to effectively execute a multi-dimensional framing of the invention.

As an example of multi-dimensional invention framing, if environmental, functional, and structural dimensions of an invention are identified by the application drafter as dimensions of the invention that need to be described in order to effect a complete description of such, the description structure can include descriptions of the invention, respectively, as a distinct system within the operating environment, with reference to its operation or function (e.g., within the operating environment), and as a distinct system that includes distinct component parts with distinct functions. For these descriptions, figures should be prepared that show the invention as a distinct system within the operating environment, that illustrate its operation within the operating environment, and that show the individual system and individual components of the system.  For example, a figure illustrating the typical operating environment can depict how the invention is situated as a distinct system, with respect to other structures, in the typical operating environment. Moreover, in a figure illustrating the operation of the invention, structures such as numbers and/or arrows can be used to illustrate how the invention operates in the typical operating environment. Additionally, a figure that depicts the invention itself can be used to show the internal components of the invention and to illustrate their function and interrelationships.  In this manner, multi-dimensional invention framing provides a multi-dimensional frame that can be used to describe and bring order to complex and/or unwieldy subject matter in a manner that yields an accurate, clear and complete description of the invention

Scope of Protection Preservation

Scope of protection defines what is protected by a patent. The scope of protection that is typically sought by inventors is the fullest measure of protection legally available for their inventions.  This can be difficult because claims that are drafted to provide such are typically amended during prosecution. A measure that can be used to preserve scope of protection is to systematically ensure that as many features as is possible that have the capacity to differentiate the invention from the prior art are identified and used in the description of the invention. Such features can operate as signatures of the invention that embody the invention’s uniqueness and enable the invention to be differentiated from even the closest prior art. For example, with respect to each of the identified dimensions of the invention, the drafter should describe as thoroughly as possible details of relevant components, operations, structural and functional relationships, interactions, connections, etc. In particular, with regard to these features, it is important that the what, when, where and how is thoroughly described. Some of these details may not seem necessary but can prove invaluable for distinguishing the invention in a decisive manner from prior art. This can be especially true when (as is often the case) a prima facie case for rejecting claims is made where there are essential differences between the invention and the prior art but superficial similarities make the differences difficult to distinguish in the absence of signature detail. It is intuitive that in many such cases the weakest part of the rejection would be the parts of the rejection that attempt to cover novel subject matter. Seeding the description of the invention with details that enable the invention to be readily clarified and distinguished from the prior art gives the practitioner the “powder” to attack the part of the rejection that is most vulnerable with invention clarification type amendments instead of more narrowing amendments that add extraneous subject matter.

For example, consider a patent application with claims that are directed to a widget A which is a testing system that is configured to test circuity that is placed on an expanding and retracting surface thereof. In addition, consider a patent relied upon as prior art to reject the claims that describes a widget B, a wearable item that is to be worn on the wrist, which includes built-in circuitry, that can be tested by expanding and retracting a component of the item to which the circuitry is attached.

If the patent application specification that discloses widget A is not sufficiently detailed, distinguishing widget A from widget B could present a significant challenge. This could be especially true if the examiner has distilled the invention to an apparatus for testing a circuit using an expanding and retracting component. Preparing the specification to include details about widget A such as those related to operating environment (details that describe a system for testing respective externally provided circuits as opposed to its own circuits) and structure (details that describe the mechanisms that would be necessary for securing successive circuit components to the expanding and retracting component of the testing system), etc., will probably be needed to provide subject matter that could be added to the claims to distinguish the invention from the relied upon prior art. Such subject matter could be especially useful to distinguish the invention if the relied upon reference taught away from modifying the relied-upon reference to teach the claims of the patent application (e.g., that the circuitry could not be removed). It should be noted that the addition of such subject matter to an independent claim in order to distinguish the claimed invention from the prior art would probably not significantly narrow the scope of protection as these features would probably be needed to practice the invention.

The above case is hypothetical but it illustrates the importance of being thorough in describing the invention such that it can be readily clarified as a means of establishing patentability. This approach provides a built-in mechanism for preserving claim breadth that is based on the generation of the type of details that can be added to claims to distinguish claimed inventions without significantly narrowing claim scope. In this manner, although amendments to the claims may not be avoided, the likelihood that the inventive concepts that are important to the company’s success are adequately covered in the patent that ultimately issues is substantially increased.

>>>> CLICK TO CONTINUE READING <<<< In Part II of this series we will look at how to draft claims that accurately define the subject matter that is regarded as the invention in order to target the right infringers.

The Author

Reginald Ratliff

Reginald Ratliff is a partner with Vanguard/IP, LLP.. His technological experience includes software systems, semiconductor process technology, microprocessors, payment systems, artificial intelligence, cloud-based systems, consumer electronic products, mobile devices, digital systems, analog systems, communication networks, storage devices, and other electronics and computer related technologies.

Prior to founding Vanguard/IP LLP, Reg was a Shareholder at Schwabe, Williamson & Wyatt, Partner at Hanley Flight & Zimmerman LLC as well as Senior Counsel at Womble Carlyle Sandridge & Rice LLP.
He also worked as a Patent Examiner at the USPTO for 11 years, examining applications in the electrical arts and receiving 11 special achievement awards.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 8 Comments comments.

  1. Anon June 9, 2021 7:46 pm

    Interesting conceptualizations,

    Outside of being your own lexicographer, would you recommend a thesaurus?

  2. Pro Say June 9, 2021 7:49 pm

    Thanks for the excellent article Reginald. Looking forward to Part II.

    Relatedly (given the tech space you operate in), perhaps you’d be willing to also share with Gene’s readers a few tips / approaches you’ve utilized to successfully traverse 101 / eligibility rejections at the PTO / in the courts.

  3. gene June 10, 2021 8:18 am

    i will continue to claim and describe the anatomy only. my litigation associate informs me that the infringer will pounce on the habitat description. consider a drill bit with proximate lubricant source. do i want the dentist to include description of dentin, enamel (habitat, behavior in habitat) etc. hell no. how could we justify pursuing infringing oil companies and shop equipment manufacturers.

  4. George June 12, 2021 12:03 am

    Good summary. I agree but the written description is what should be as comprehensive and broad as possible (without completely overlapping any combination of prior art). But that is mainly the job of the inventor, so sometimes they have to be sent back to the drawing board (after the weaknesses are pointed out).

    How to best write claims depends a lot on the examiner you get as well! Some are pretty easy and some are like the Gestapo (lol). Generally I stick to ‘as broad as possible’ and accept the fewest limitations possible. 103 objections be damned – they just have to be overcome however long that might take. Where there’s a ‘stubborn will’ (and money), there’s a way (or at least there should be). Otherwise patents are of little actual value and certainly not worth the money and time invested in them. So my motto is to only accept ‘broad’ patents, or ‘fix the invention’ to allow them.

    Many inventions today just aren’t very good, or just involve very minor improvements to prior art. Bad inventions result in bad patents, which are worse than no patents at all in the long run (and more expensive too). Letting an inventor down is tough, but someone has to do it (sometimes). Encouraging ‘fantasies’ isn’t doing would-be inventors a favor.

  5. Anon June 12, 2021 8:24 am

    George,

    Your comment of “but the written description is what should be as comprehensive and broad as possible (without completely overlapping any combination of prior art).” shows a misunderstanding of the nature of the legal document that you have any to expound upon.

    These things simply are not engineering documents.

    Please try to understand the subject that you wish to speak about before you speak.

    Put it this way: would you purposefully train your AI system to give you wrong answers?

    That is basically what you are doing with the “training” of your continuously off-the-track views (while ignoring any and all feedback that would put you back on the path).

  6. George June 14, 2021 2:03 pm

    @Anon

    “That is basically what you are doing with the “training” of your continuously off-the-track views (while ignoring any and all feedback that would put you back on the path).”

    LOL!!! I’m not ‘training’ anything (yet)! If & when training is needed there will be input from actual examiners, the PTO & the courts (based on their own ‘millions of public documents’). And so in a decade (or even less) we’ll see who was right & who was TOTALLY wrong, Anon! We’ll also see who ‘profits the most’ from being right!

    P.S. Originally (before lawyers got involved), patents WERE mostly engineering documents and less formal claims made by their inventors in their own words, not lawyers. Those were called Letters Patents. What was important then was that other scientists, engineers and ‘experts’ in their fields understood what was being explained and claimed (as being new), not lawyers and/or lay people (who typically know little if anything about what is being disclosed & claimed). And why should lawyers care about what’s new & useful to scientists, engineers & manufacturers?! Lawyers don’t MAKE ANYTHING or sell anything based on those disclosures. And, lawyers don’t CREATE JOBS! The only thing lawyers ‘produce’ are billable hours and lots & lots of words on paper! That’s all they have ever produced. In addition, all the millions of pages of ‘verbiage’ they produce every year (destroying 1000’s of trees) are just shredded shortly after they’re created (often without ever even being needed or used). Fortunately computers & the internet have at least reduced the amount that gets wasted every year (which is 99% of it)! So, I’m in favor of eliminating almost all of that wasted paper – by using computers even more! You have a problem with THAT too?!

  7. George June 14, 2021 2:13 pm

    “shows a misunderstanding of the nature of the legal document that you have any to expound upon.”

    No, I think it shows a ‘deep understanding’ of those documents and what value they can have (sometimes), if properly written and ‘fought for’. Garbage in – garbage out, is of no value to anyone, except maybe lawyers. Actually, the sad truth is that patents are ALWAYS valuable to lawyers (for some reason)! Good or bad, patents always have value for lawyers (in fact the ‘worse they are’ and the mores there are, the more value they might have for them). Patents represent a clear conflict of (financial) interests for lawyers. Fewer patents and litigation means a lot less work for lawyers! They will never advocate for issuing fewer (but better) patents.

  8. Anon June 14, 2021 3:37 pm

    You continue to be off – factually, legally and historically.

    But go ahead George – you be you.