A vast majority of people seeking patent protection to protect their products or technology leave the details of the drafting process to their patent attorneys. That is, given the specialized (and, frankly, arcane) nature of the patenting process, even highly-skilled business professionals believe that a patent specialist (that is to say, attorney, or agent) is better equipped to understand how to best describe your invention to the US Patent Office (“USPTO”). This can be an inefficient way to handle the early stage of the patenting process because it can make the process more contentious. Such contention can result in more limited claims than desired and can make the patent take longer to issue and the process considerably more expensive.

When determining whether a client’s invention meets the legal requirements for patentability, a patent specialist thinks about how to legally distinguish the invention from previous ones. Specifically, the patent specialist must demonstrate to the USPTO, represented in the person of a patent examiner, how the invention is new and non-obvious given what others have done before. The patent specialist must also determine how to describe the invention in a way that meets precise technical and legal requirements. While working in this “legal silo”, a patent specialist may not have any insight into the business benefits of the invention because the client’s business team is typically not involved in the patent drafting process. This means that when drafting the application, the patent attorney presents the invention in relation to the “checkboxes” that the invention must fulfill in order to meet the legal requirements for patentability.

Furthermore, even if such business information is available to the patent specialist, he or she rarely possesses specific marketing or business expertise. Without such training, a client cannot reasonably expect their patent specialist to present the invention in a way that effectively convinces the patent examiner that the invention is “the best thing since sliced ​​bread.” Most patent attorneys will completely ignore what I call the “wow factor” associated with an invention.

This “Wow Factor” sounds a bit like marketing, doesn’t it? Exactly! And, given the fact that business professionals better understand the benefits of their products and technology than others who have come before, a critical factor in a successful patenting effort is not only demonstrating to the patent examiner that the claimed invention is legally patentable, but also that the invention is SUBJECTIVELY deserving of a US patent. It is this subjective aspect that is best handled by those who understand the benefits that a product or technology brings to the relevant consumer, that is, the marketing team tasked with building a business case for the product or technology associated with the invention. While often absent from the patent drafting process, I believe this marketing story serves as a critical factor in any successful patenting process.

I will note that many patent scholars have questioned my contention that a significant aspect of a successful patenting process should involve developing a marketing story. These discussions generally center on the statement that “if an invention is patentable, the patent examiner is legally bound to allow the patent application.” This is certainly true, but often an invention that is legally patentable enters adversarial examination process when the examiner develops a point of view (even if it is legally incorrect). When this happens, the examiner often “dig in” and refuse to allow the patent application based on their misperception of the invention’s legal merits. Such an adversarial review process will, at a minimum, add considerable cost and time to the patent application process, but is also likely to result in undesirable amendments that will render the final patent insufficient to protect the commercial product or technology from the competition.

When drafting a patent application covering a client’s invention, many patent practitioners fail to recognize that there is a person on the receiving end of every patent application. This person, the patent examiner, spends the day reviewing patent applications in a fairly narrow area of ​​technology. In addition, the patent examiner works under a quota system that requires him to complete his examination of each application in a fairly short period of time. One can imagine this examiner working, for example, on patent applications for light bulbs. Each patent applicant (and her attorney) is likely to believe that his invention is unique and a “game changer.” However, to the patent examiner who spends his work time examining light bulb inventions day in and day out, each application probably seems like a slight variation (if at all) from what he has seen over and over again.

Thus, one can imagine the patent examiner yawning at most of the patent applications on his or her desk. Add to this the little time the examiner has to assess whether the invention meets patentability requirements and it should be clear why many valuable patent applications are subject to contentious and costly patent processes prior to issuance.

In addition to these issues that are personal to the patent examiner’s job, on a broader scale, it should also be remembered that the patent examiner’s decision is imbued with public policy considerations. That is, if the patent examiner allows a patent to be issued covering the claimed invention, no one else can legally do what the patent covers. The issued patent will effectively restrict the freedom of action of the public in the area of ​​the issued patent. To justify this, a patent application must demonstrate to the patent examiner why the public should be prevented from doing what they could otherwise legally do: practicing the product or technology covered by the patent claims.

By remembering during the patent drafting process that there is one person standing between the patent application and the issued patent, much cost, time, and effort can be eliminated from the patenting process. Simply put, in addition to presenting a legal basis for why an invention is patentable, a patent application must also present a MARKETING HISTORY of the invention to the patent examiner. The key is to include in the patent application a “hook” or “theme” that is aimed at building a story to the patent examiner of why the invention is not only legally sufficient to patent but also that the invention has a business reason. to exist. A critical part of this effort is focused on demonstrating to the patent examiner why the invention warrants licensing, especially since the patent will prevent others from acting freely. To do this, a patent search must be conducted and analyzed, as the patent literature will likely serve as the primary source of denials raised by the patent examiner.

To build this strong marketing story, the patent specialist must collaborate with one or more people on the business team responsible for building a business case for the product or technology underlying the invention stated in the patent application. This will allow the patent specialist to build the underlying patentability story, or “Wow Factor”, which may result in the patent examiner taking the application and thinking “this is not the same light bulb invention I see day after day”. While the patent examiner may not allow the patent application on a first review, I submit that the post-examination process can become less contentious if a marketing story is developed to support the patentability story.

It should be noted that many patent specialists will disagree with this strategy because it is a departure from traditional patent drafting methods. Specifically, many patent specialists have been trained to only discuss the invention in the application and ignore prior art unless the examiner mentions it. This strategy was certainly viable before the explosion of patent filings in the last 10 years, but now there is so much prior art available in most areas of technology that a patent applicant must realize that prior art cannot and should not be ignored. . I think that by facing the prior art and preparing a patentability strategy and a marketing strategy, the patenting process will probably be less contentious.

Finally, some patent specialists might see my recommendations as a reason to rail against the USPTO and patent examiners. While there are many issues that need to be fixed, the truth is that the system is what it is today. One may want legal purity in the patent system, or one may be pragmatic about what it takes to successfully obtain a patent in the conditions that exist today, where the patent has sufficiently broad claims to protect the product or the underlying technology from competitive imitations. where this patent was obtained at an acceptable cost in a reasonable time frame. At the end of the day, most customers would prefer the latter.