Patent enhancements and new uses

Your research and development program not only creates core innovative technology, it also matures the use of the technology in the context of products. Many of the innovations discovered in this innovation development process are patentable, even though they are only incremental in nature and fully dependent upon the core innovation. If you do not protect these inventions, picket fencers might patent them and negatively impact your freedom to practice your own innovation. A well-designed picket fence can even block your approach to the marketplace. But does it make sense to spend tens or hundred of thousands on application and maintenance fees for innovations that don't really need individualized protection?

A more cost-effective approach is to patent fundamental technological advances and then use inexpensive technical disclosures for incremental innovation. This standard defensive disclosure tactic can prevent the patents others would use to build picket fences around your patents. By surrounding your core patent with disclosures you effectively lock out all others and leave your patent as the only exclusive technology in the space. In effect, you expand the scope of your original patent by making it obvious how to use the protected technology in actual applications.

As with incremental improvements of fundamental technology, you can publish all new uses of an invention to protect your freedom to practice. This ensures that your original patent extends its protection into areas of new application. Using technical disclosures as a barrier against picket fencing also improves your position in licensing negotiations. Since your patent is well protected, forced cross-licensing can be prevented, and you can dictate the terms. During your invention review, you should ask yourself the question, "If I could be sure that nobody else can patent this invention, would I actually need a patent?" If your other patents provide you the leverage you need, then publish a disclosure to protect your freedom to practice, and save yourself many thousands of dollars in the process.

Old or obscure prior art

Opportunity for this tactic often arises when obscure prior art is identified during a prior art search performed in preparation for filing a patent application. It is particularly pertinent in situations where such prior art causes you to reduce the scope or even give up the idea of filing a patent application. In this situation, it is essential to make sure that patent examiners can find the obscure prior art that you found as they consider applications from your competitors. Essentially, this takes the legacy document best practice one step further to include old prior art anywhere in the world. The fact that prior art is already in the public domain does not mean an examiner can find it during a prior art search. A hidden reference is of absolutely no value in preventing a bad patent from issuing. Rather than risk the time and expense to fight such a patent, a technical disclosure of old prior art (including the date of the original publication as well as a reference to it) will bring the old prior art to the attention of examiners. If copyright is a concern, a summary of the prior art reference can be published in the disclosure with a reference to the original. A common example of this tactic is publishing summaries or translations of foreign-language prior art references. Awareness of such a foreign language document may have caused you to abandon hopes of patenting a given technology, yet it is likely that others, including examiners, wouldn't find the same document during their prior art searches, and thus a competitor could patent the technology. "Since I cannot patent this technology, shouldn't I make sure others can't as well?"

Technical disclosures originating at the patent application and prosecution stage

As a point of reference, the patent application and prosecution stage begins with preparation of new patent applications, and includes the application prosecution stage. It includes decisions made during the application drafting stage as well as those made based upon developments that occur during prosecution of the patent application. Many of the best practices in this section increase the value of your patent while others help you maintain your freedom to practice the ideas.

Dream patent

Very often, the patent you want is much broader than the one the examiner will allow. You start things off by applying with the broadest claims you think you can get, and the examiner fires back, requiring you to narrow them. Perhaps you iterate a few times before coming up with claims that are as broad as you can get, yet narrow enough to satisfy the examiner. And sometimes, you find it useful to break an original application into several splinter applications that cover various fractions of the original innovation. This process is necessary, but it often leaves you with much less protection than you originally expected, and it also leaves you with a decision. Indeed, it is possible that there are elements of your original idea that remain unprotected by your patents and are exposed to patenting by a competitor, either in the original patenting jurisdiction or in another. Perhaps this is even intentional - you decide it is too expensive to pursue all of the splinter applications. Thus a defensive tactic in such a case is to create a dream patent for the purpose of publication. "If I could claim everything in one application, what would I claim?" The dream patent could be the original application, or it could be even broader. By publishing this dream patent, you assure yourself that there is no component of the idea that could be patented by a competitor who thereby invades your turf and turns your development effort into an IP nightmare.

Early publication of patent applications

In most cases, patent applications are published 18 months after filing, and in the United States, applicants may request early publication. Nevertheless, in all cases there is a significant lag time between your submission of an application and the time that it becomes searchable and effective as prior art. There are several cases where it is advantageous to publish new applications immediately, rather than waiting for them to be published by the patent offices. For example, immediate publication of your application helps to ensure that a foreign patent cannot be granted during the time that your application is held in secret by the first patent office. Otherwise, it is possible that a foreign patent will be granted to a competitor, and your only recourse would be expensive litigation to invalidate the competing patent. Since you already filed for patent protection, your bar dates will not be effected, but you receive immediate protection from the risk of the expense of foreign litigation or interference actions.

Secondly, early publication can be desirable in cases where you wish to promote the patent-pending technology for licensing. The early publication can be used to inform potential licensees of the existence of your technology and the associated pending patent, long before they would find it by searching patents. This can be especially useful in areas where possible licensees are not necessarily known by the inventor and cannot be easily located. This practice is extremely useful to universities that wish only to attract licensing revenue, rather than to create products based on the technology themselves. In another strategy, often referred to as the "Pied Piper" tactic, one can publish technical details of pending patents (this time without disclosing that there is a pending patent) in order to influence other companies to adopt the technology before the patents are granted or the patent applications are published. Once these companies have adopted the approach you suggest in the disclosure, they will be committed to the technology claimed in the patent applications. When the patents are finally granted, the early adopters will have very little leverage in licensing negotiations.

Publish patent rejects

If the patent office rejects your patent and you decide not to pursue it further, you may be at risk of a competitive patent issuing under a different patenting jurisdiction or merely under a different examiner.

You can mitigate this risk by publishing a technical disclosure containing the rejected application, optionally along with the examiners comments describing the reason(s) for the rejection. By publishing the reject, any subsequent patent has to be novel and non-obvious in light of your application and the examiner's
comments and citations as well.

Technical disclosures originating in technology/business review

Technology/business review represents the ongoing process of managing R&D, new technology, innovation, and the competitive technical landscape. Examples of disclosures originating from this point include technical disclosures initiated by:

• Research scientists or production engineers during the course of routine work
• Cross-functional groups in business units during status update meetings on ongoing R&D projects
• Marketing managers who notice threatening patents by competitors

Many other examples exist; these are intended to be illustrative of the broad nature of the technology/business review category. Also, due to the breadth of this category, many of the tactics in the other sections will be applicable during technology/business reviews.

These tactics can substantially alter the texture of a marketplace by influencing the balance of power among your business partners, your competitors, and yourself.

Supplier control

There are two types of competitors to a business. First are the traditional competitors that compete with you for market share. Second are the complementary product developers - those who you might partner with to create value but with whom you also negotiate to maximize your share of the revenues. Patent ownership provides a key leverage point for relationships with complementary product developers (such as your suppliers, partners, or those you supply to)
since patent holders can turn themselves into sole-source providers. However, an innovation that your partner could patent to your detriment is often not the sort of invention that you would want to patent. Perhaps your getting a patent on the technology would damage your relationship. Or perhaps the invention is merely in an area in which you have little direct interest. Such innovation that is created in connection with complementary product developers or partners should be immediately (and perhaps anonymously) placed into the public domain. A well-placed technical disclosure will prevent your supplier or partner from patenting the innovation and thereby obtaining a sole-source position.

For example, you co-design a new type of packaging material for your product that you would like your packaging supplier to develop and provide to you. If you publish the various aspects of that invention, you can prevent your supplier from obtaining a patent. Publishing the invention does not prevent your supplier from using the invention, yet if the supplier fails to deliver for other reasons, you would still be free to obtain the packaging from another supplier willing to use your invention. In some instances, you'll want the exclusive protection granted by a patent. However, in many situations, if the innovation is something you don't intend to produce yourself, or if you did not invent it yourself (i.e. the supplier invented or assisted in the invention), you only need the assurance that you can use the innovation freely.

Bottom line, sometimes patents will be necessary, but when your motivation is to secure your freedom to use the innovation, technical disclosures fit the bill and the budget.

Customer control

As is clear from the previous tactic, IP can provide serious leverage to your supplier, and you need to protect your interests. Looking the other direction
along the supply chain (i.e. toward firms for whom you are the supplier), we
find additional danger and opportunity.

A customer who patents profitable uses or new applications of your products can control the market for your product. A customer that patents lucrative products based on new uses of your components can increase his or her profits and decrease your product outlets or limit your market.

Your only choice is to partner with your customer (who now has premium bargaining position) or forego the opportunity as they partner with vendors who produce similar products to yours. In either case you lose while you watch your competitor get the lucrative contracts that should have been yours. Would you like to avoid being controlled by one of your customers and retain multiple conduits to the ultimate market? You could keep ahead of your customers by patenting applications of your products, but this could be considered offensive to your customer and seriously interfere with your relationships. Besides, is it really necessary? For far less cost you can create and anonymously publish technical disclosures that keep your marketplace free and allow you to avoid being controlled by your customers. Then you can leverage your core competencies as a dominant manufacturer, a well-connected distributor, or a well-branded marketer to compete and succeed in the marketplace.

Review your products and the customers they service. Are there patentable innovations that could limit your conduits of output? Publish the innovations before someone else patents them. Is a customer of yours serially patenting innovation based on your products, keeping potential clients out of your market space? Open up the space (and your market) via a broad, visible, (and possibly anonymous) technical disclosure.

Extend the reach of your patents by covering new uses of existing technology

Your patents were carefully constructed to give you the most extensive coverage you could imagine - at the time of application and within the limits of existing prior art. At the point of a technology review, your innovation has been in the marketplace for a while and you've learned more, but your patent remains the same. Every day your patent is at risk of losing potency as competitors have the opportunity of patenting new uses for your technology.

Suppose, for example, you have created a new jet engine, designed for increased thrust. Your field-trial engineers note that the newly designed engine uses very little fuel while idling. A disclosure that references your patent and shows how to leverage the invention in a significantly enhanced turbine for an army tank could extend your patent into a lucrative licensing area, since defense contractors need your technology. On the other hand, if you don't publish this new use, a defense contractor could patent around your invention (for his own uses) and seize the upper hand in licensing this technology in his own domain.

Thus, at various stages of review, you should take the opportunity to update the scope of your patent by conceiving and publishing new uses of your technology as technical disclosures. Ask yourself, "What could someone use my technology for?" This tactic provides the mechanism to ensure that the only patented (and licensable) technology within your domain is your original innovation itself.

Create/support a technical standard

Many companies benefit from the existence of established technical standards. Disclosures can be used effectively to create or promote technical standards, thereby allowing you to benefit. Typically, there are two types of entities that benefit from the existence of a technical standard. The first type is the company that is, or could be, the creator or producer of the technical standard. The second type relies on the technical standard for development of products that will be more readily adapted by the market.

If you have created a technical standard, an effective use of technical disclosures would be to make freely available any innovation that makes your technology easier to adopt, cheaper to implement, or more useful to end users. Patents in this area could be counterproductive, as third parties may see the space as being too locked up to facilitate development, and they may then choose to support other competing standards.

If you rely on a specific technical standard, you can publish technology that increases its foothold, thereby potentially increasing your overall customer base. This is the principle that has driven much of the development in the Linux open-source community, where software developers produce tools to promote the operating system in order to increase the potential subscriber base for their other software. Again, patenting in this space may deter others from adopting the technology, and actually do you more harm than good.

In either case, technical disclosures can provide a mechanism for increasing your market share in a space with defined technical standards. Unlike patents, the anonymity that is possible with technical disclosures allows you to develop and promote up and coming technical standards without alerting others to your related efforts. This can be a powerful tool in developing new technology without suffering losses in competitive intelligence.