Effective Patenting (Part 2 of 2)


In a previous post I discussed a number of relevant points related to a business perspective on patent protection, or what I like to refer to as Effective Patenting.  As a point of significance I noted that before filing a patent application, it is first important for a business to determine what its objectives are for doing so.  Seeking a patent just for the sake of a patent is hardly ever fruitful.  I identified three primary objectives for consideration as: Excluding Competition, Marketing Tool, and Revenue Stream.  Once objectives are identified, it is time to consider strategy.

Claiming Strategies for Meeting Objectives

We previously over-viewed the importance of claims in a patent application, as the claims are the heart of the application.  Claims describe the invention and subject matter that you are trying to protect, and ultimately determine a carved out legal scope of protection.  But claims should be treated as more than just words.   They should help a business achieve its objectives, and preferably provide a means for return on investment of resources dedicated to patent strategy.

Consider the following:

  • Excluding Competition – If your chief concern is excluding your competitors from using your technology, then the patent is drafted broadly with a large scope of invention. Your goals here are to get the greatest extent of protection for your invention, which may include multiple patents that result in a ‘portfolio’.  The patent application will be written broadly, but will likely need to be narrowed before it can issue. Care will be taken to try to prevent future technology from making your patent obsolete.  Often the invention will be described generally in order to do this.
  • Marketing Tool – If your primary concern is marketing, however, the drafting of the patent will be much narrower in scope. The claims will be specific to your invention and without extra subject matter that is not readily apparent. This will speed prosecution and ease the allowance of the patent with minimal cost.
  • Revenue Stream – In order to achieve this goal, the approach will be a hybrid of the above.  You want broad enough coverage to make your product or service attractive to businesses who may want to license it, but not so broad that significant changes need to be made prior to issue.

Prosecution Strategies for Meeting Objectives

  • Excluding Competition – The main objective here is to get as large a scope of protection as possible.  So, in keeping with that objective, you will need to fight for every bit of your patent claims along the way.  Amendments and changes will be kept to a bare minimum and all arguments by the USPTO need to be countered.  This may lead to a prolonged prosecution period and a greater expense for the overall procurement of a patent.
  • Marketing Tool – The main objective here is to get a patent, and get it fast.  You don’t want to give the USPTO much to object to or reject. Often, amendments will be liberally made in order for the rapid issuance of a patent.
  • Revenue Stream – Again, the approach will be a hybrid of the above.

The strategies above have been discussed in general terms to provide a high level overview to a patenting approach.

At Rao DeBoer Osterrieder, our goal is to help you understand these complex aspects as they apply to your business. As intellectual property strategies vary greatly between industries or even businesses, it is our aim to learn your business goals and function as an in-house IP attorney would for you. There are a number of strategies even after a patent is allowed that can help increase your bottom line.

Contact us so we can tailor a plan to your individual business goals and needs.  Make your Intellectual Property effectively work for you.

We look forward to speaking with you!


© 2017 Dileep Rao

Dileep Rao is a registered patent attorney, and admitted with the Texas State Bar.  He is a Partner with Rao DeBoer Osterrieder, a law firm in Houston, Texas specializing in intellectual property law. Contact Dileep via Email.

The views expressed in this article are those of the author and do not reflect the views of Rao DeBoer Osterrieder, PLLC, or any of its clients. All rights reserved.