Archive for the ‘Strategies’ Category

The Five Ws

Posted on March 10, 2015 by

I was recently asked to speak on a SheStartsLaw 101” panel for startups, with a focus on intellectual property and software patents. In preparing for this event, I realized how important I believe it is for anyone considering investing in patents to interrogate themselves as to their business objectives/motives as early as possible. That means really digging into the details of the five Ws:

Who are you? Whether you’re an inventor in a garage or in-house attorney at a large, innovative organization, it’s important to ask where this effort is going. Are you the kind of company who wants to go solo, bootstrapped for as long as humanly possible? Want to get angels and then VCs on board ASAP? Plan to keep this private or to IPO? Going up against litigious competitors or contributing to an open source ecosystem? All of that impacts your decisions regarding IP.

What did you invent? Honestly. What have you come up with that no one else has developed in all the long history of people sitting at their computers, coding away late into the night? What’s the competitive advantage? What’s the hook? Because if you are not able to identify a specific, technical innovation supported by solid reasons why no one else has arrived at this solution, you are going to have a challenge pursuing the kinds of patents that will help further your business objectives.

Where are you in the innovation process? Is it so early that you have an idea and a good plan for testing whether it will work? Far enough along that you’ve figured out how you’ll make this work, even if you don’t yet have a prototype? So far into it that you have sold products and are now developing additional innovations, improvements over your original ideas? All of this impacts your IP strategy as well.

When do you plan on disclosing the invention? This is a really critical question that a lot of innovators don’t know to focus on. If you plan on talking about the invention – whether it’s to your two best friends at an upcoming BBQ or to 100 of your new best friends at last week’s hackathon, patent offices in the US and around the world really frown on the sharing of inventions and over-sharing can lead to a prohibition against later filing of patent applications.

Why do you want a patent? To check a box? For resume building? As part of a multi-pronged, strategic approach to running a company? Patents are expensive, time-consuming resources to pursue. They can be the best, most valuable assets a company owns – or a complete waste of time and money. Figuring out your internal motivations for pursuing one can help you understand whether to start down the path and how far to go.

There are no wrong answers to these questions and they’re only the beginning of the conversation you and your team and your lawyer should have. It’s your business, your innovation, and how you define yourself and your objectives is personal to you/your team. But undergoing this type of analysis can help you ensure that you are making the best decisions possible in many areas of the business, including your IP strategy.

Timeline of Patent Filing Decisions

Thinking of filing a patent application? On top of having to make decisions about whether and what to file, you’ve also got a limited amount of time in which to file. If you’ve gone through the challenging process of deciding what is worth protecting, from both an innovation perspective and a business perspective, and decided you do indeed want to file, the last thing you want to hear is that you’ve waited too long and lost your right to file. Even once you’ve filed your first application (which is often a provisional), there are a number of decisions to make regarding whether to formalize provisionals and whether to file outside the country. This timeline provides an overview of the decisions you’ll need to make:

Timeline of patent-related decisions


Notice how the timeline changes if you don’t decide to file until after you’ve made a public disclosure:


You’ll have set a new, 12-month deadline for filing any US applications and may have lost the right to file internationally. Now, you may or may not need to file patent applications, but ideally that would be an informed decision – not because you didn’t know that doing that beta test would mean you couldn’t file later!

Notice that at the moment, most applicants for technology patents won’t hear from the US Patent Office for years from the filing date. This means it’s particularly important for you to consider what the benefits are to filing an application – you want to be really clear on those benefits before making that investment.

Whether or not you decide to file any applications, keep an eye out for these deadlines to give yourself enough time to make educated decisions.


Prior Use Rights – a double-edged sword

Chess piecesOne interesting aspect to the new patent law is the section relating to prior use rights.


If you are a small company who hits on a great way of doing things but can’t afford to patent it, and someone, years later, gets a patent for that exact same technology and tries to sue you for infringing their patent, you can now defend yourself against infringement with the expanded prior use rights. You couldn’t do this before except in very limited circumstances involving business method patents and the new law has expanded this right. To take advantage of the defense, you yourself have to have been using the invention in commerce for at least a year before the patent holder filed her application – you can’t just assert that “everybody” was using it although you yourself weren’t. If you can do this though, you have a defense to infringement.


Prior use rights is a double-edged sword however. There are two related ways in which misuse of this right can impact companies:
1) “Stealth Prior Art” – A competitor can invent technology, keep it a trade secret, and then later prevent a patent holder from enforcing a patent by showing that the competitor used the technology in commerce before the patent holder filed for the patent. In this way, the competitor acts as “stealth prior art” – no one knew how their technology worked or that they were using it in this way, the market wasn’t benefiting from having knowledge about this technology, and when a party that actually did disclose the technology to the public tries to enforce their patent, they are now faced with this secret prior use that weakens the utility of their patent, at least as to the stealth competitor. There’s something unsavory about the potential for abuse in this type of scenario. For a more detailed discussion of the ways in which prior use rights can be misused, you should check out IP Watchdog’s series of articles on this topic.
2) Pressure to file earlier – one clear way to deal with the possibility of stealth competition is to file as soon as you possibly can, which puts more pressure on already-constrained patent budgets.


Prior use rights can be an extremely helpful way in which small companies can defend themselves against companies that have more funding and can afford more robust patent portfolios. Unfortunately, as is often the case, there are still ways in which a useful tool can backfire. This is a potentially troubling, and somewhat controversial, aspect of the new law that the industry will be watching with interest.


Can I patent my software?

Posted on July 16, 2011 by

CrossroadsCan I patent software and business methods? This is the first question most clients have, and one of the most common questions I get. But the real question is should you patent your software and business methods?

From a legal perspective, we need to look at two requirements in particular: novelty and obviousness. Regarding novelty, you can usually find a way to write up the invention so that it’s novel – you can add a requirement that it be coded a certain way, or that you take a particular step that is unique to you and you alone (“and then a widget powered by purple hamsters running clockwise does the inventive thing”). But then your competitors will have an easy way to avoid infringing your patent (Use blue hamsters! Or have them run counterclockwise! Or leave them out altogether!). So you and your lawyer need to be able to resolve the tension between ‘broad enough that you’ll be able to cover work-arounds’ and ‘narrow enough for the Patent Office to find the invention patentable.’

Next, you need to address obviousness, which is a big issue for software and business method applications. Why wouldn’t one of your peers be able to easily figure out how to make your invention? Why hasn’t anyone does this already? For a more detailed discussion on obviousness, see this post.
If you and your lawyer can identify solid arguments to overcome novelty and obviousness issues, then you should consider filing the application. If not, you may want to reconsider using patents to protect that feature.

Then there are a number of business questions to consider: Is it worth your time and money to go through the process? What will your business gain from developing patent properties? How will you benefit from this investment in the years before the patent application is approved and a patent issues? For a detailed discussion of some of the biggest business reasons to file a patent, see this post.

If you and your attorney have identified the aspects of your technology that satisfy the novelty and obviousness requirements and you’ve made the business decision that your company will benefit from an application, then, yes, you can file a patent application.


P.S. No hamsters, purple or otherwise, were harmed in the writing of this post!


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Believe it or not: Amazon 1-click Patent Shows System Works

Posted on April 26, 2011 by

Keyboard button with the word "learn" on itFew patents have inspired as much confusion, horror or even revulsion as the infamous Amazon “1-click” patent. This patent covers the ability to send a purchaser identifier and a request to order an item to a server, in response to only a single action being performed by a client. I often hear about how ridiculous it is to allow a patent on buying something with one click and how offensive it is that Amazon actually enforced the patent. While there are plenty of ridiculous patents, and plenty of companies taking advantage of the system in truly lamentable ways, there are two big reasons why the 1-click patent is actually proof of our patent system doing the right thing.


Do you remember the Internet in the fall of 1997? We’d barely had search engines for two years, Google hadn’t yet incorporated, and we were just starting to learn about MP3s. This was an era before dancing hamsters and rickrolling, and only a minority of companies had any web presence to speak of. If you approach the idea of 1-click from the perspective of someone trying to shop on-line via dial-up back in ’97, it starts to sound pretty revolutionary. Most sites required many steps to complete a transaction, intentionally modeled after brick and mortar stores with shopping cart interfaces mimicking real-world shopping experiences. So Amazon’s approach passes a litmus test of patentable material – that the patented idea was truly new.


Secondly, Amazon used their patent in a very innovation-friendly manner. Throughout history, patents have played a vital role in helping a new innovator gain a toehold against established ways of doing business. The Amazon patent issued in September 1999; e-commerce was just starting to gain traction, competition amongst e-retailers was intense, and Christmas was coming. In October 1999, Amazon sued Barnes & Noble and overcame B&N’s arguments to convince a court that there was a real question about infringement that B&N had to remove or modify their “Express Lane” feature. Regardless of how the case would go, Amazon was able to keep B&N from capturing all those holiday shoppers who were just starting to figure out they could do their shopping on-line. This is a case where a patent gave a forward thinking, innovative “David” a fighting chance against a “Goliath” – a Goliath doing everything it could to imitate, not innovate.


There’s no denying that there’s a lot to fix about the patent system – the Patent Office needs funding to hire and retain better-trained Examiners and to eliminate the current backlog; the patent term for software patents could stand to be shortened significantly. But just as important as the nay-saying is to focus on the times when the system does exactly what it’s supposed to do – promote progress.


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Why Timing Matters in Patent Law

Posted on March 6, 2011 by

Chess pieces The two biggest, non-financial questions to ask yourself in deciding when you want to file your patent are 1) could you have competitors working on a similar invention and 2) when did you first tell anyone about your invention?

Every day you put off filing your patent application is another day someone else has to complicate your efforts to get a patent by filing for a patent on the same or a similar invention. That’s because the date on which you file that application plays a big role in defining what kinds of documents the Patent Office can use in rejecting your application, which ultimately impacts how broad or narrow your patent rights will be and how tough a fight you’ll have to get those rights allowed.

Even if you are convinced that no one else on the planet is working on this invention and that you won’t have to worry about prior art, you may still want to file that application sooner rather than later. As we’ve discussed before, if you make a public disclosure of your invention, you’ll have limited the amount of time you have in which to file that application.

While it’s all well and good to say that you ought to file sooner rather than later, you’ll need to balance these factors against your particular resource constraints. In some scenarios, you may be better off deferring detailed disclosures until you can raise the funds to file an application – or getting coaching from your attorney as to what not to say in your disclosures to others. Alternatively, you may need to make the business decision to gamble that what you’ve got is so innovative that no one else is going to come up with a similar invention before you can file your application. Regardless of your company’s particular situation, keeping these timing factors in mind will help you make sound decisions about your patent strategy.

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What is a “continuing” app? Why file one?

Chess pieces Once you have filed a first non-provisional patent application and until that first application issues or is abandoned, you can file additional applications “related” to that first one. No matter when you actually file one of these “continuing” applications, everyone will treat the application as if you filed it on the same day as the very first application. The downside is that these applications have short life spans because they also expire at the same time as that first application. So why file one?

Smart use of continuations can save a company money. For example, you might file an extremely detailed first application that would support claims to a number of different aspects of your invention. You might choose to file the application with a small subset of the claims – perhaps the ones most relevant to your company at the time of filing – and then you only have to pay for the PTO to examine that focused subset of claims (and for you/your lawyer to respond to the PTO’s initial rejections). Once you get a patent allowed you’re 4-7 years out from time of filing and in a different place as a company, both from a funding perspective and from a business perspective. Maybe you’ve long since moved on to another venture – no need to have spent money on those other aspects of the invention. Or maybe the focus of your company has changed to one of those other aspects and you’re thrilled that you can now protect the methods / products that have become relevant to your business. Either way, you’ve bought yourself the time you need to make more informed decisions.

Additionally, filing continuations can be useful when licensing the technology. If you have continuations that are each directed to different aspects or implementations of the invention, you have much more granular control over what rights you license out. Say you have a patent that supports X, Y, and Z, where Z is the least relevant to your business model. You may want to license out Z to a company that is going to be able to use Z and send you substantial royalty fees – but you may not want to enable them to compete with you in areas X and Y. Continuations can help you do that.

How to Address Patent Skeptics’ Concerns

How to If your company’s growth strategy includes patent acquisition, the execution of your IP strategy will depend upon cooperation from the whole team. One challenge that you may face is addressing the concerns of anti-patent employees. For example, it’s quite common for software engineers to be skeptical of the value and propriety of patents. If your company makes the decision that it will develop an IP portfolio, clearly explaining the rationale behind the decision goes a long way to helping even skeptics understand why cooperating with the strategy makes sense.

Schedule regular meetings to address questions and concerns and to discuss topics such as how and why the company plans to use patents, what kinds of innovation the company will and won’t file on, and why it’s in the company’s best interest to pursue its patents strategy. Additionally, make someone available to employees who can do patent myth busting, answer questions, and explain the company’s perspective on IP.

When they understand how the company arrived at the conclusion to implement a patent strategy and why the company believes the strategy is important, employees tend to become much more willing to put aside their philosophical concerns for the good of the company.

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Provisionals vs. non-provisionals – what to file?

Chess pieces In an ideal world, inventors would only ever file non-provisional patent applications. We would have plenty of time and resources to thoroughly discuss the invention and work out the claims, draft a detailed specification and prepare a complete application. In the real world, unfortunately, this isn’t always possible. How do you decide whether to file your application as a provisional?
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3 Pitfalls of DIY Patent Provisionals

Caution signTechnically, you don’t need a lawyer to write a provisional patent application. It’s true! But you’ll miss out on having a trained eye helping you avoid all the mistakes that await the novice drafter. And, unfortunately, an improperly written provisional can really be just as bad as no application at all. Let’s look at three of the big pitfalls to watch out for.
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