All good and fine to have a patent or several. But the end game is for these patents to protect your “space” so that you have a competitive edge in the market. So, ask, do these patents do what their supposed to do? Are they broad enough to keep a competitor in check? Are they strong enough to withstand challenge?
Patents can be challenged in several ways:
- Novelty: This asks if anyone came up with it previously and publicly disclosed it – published it, presented it at a meeting, sold it and the like.
- Is the claimed invention obvious? In other words, could someone in the field have arrived at the same thing based on what was known at the time? In its simplest form, obviousness examines whether this just a known widget now painted red or shaped slightly differently. Of course, it can get far more sophisticated than that – such as whether a particular chemical compound could have been arrived at from related structures already published.
- Did you fully describe the invention in the patent? Part of the written description requirement looks at what is described in the patent and whether it shows you invented the full scope of what you have claimed. Just because someone in the field could have eventually reached a particular variation having read your patent isn’t necessarily enough. Written description can come down to whether you thought of possible alternative forms and wrote enough in the patent to describe them.
- Is the invention enabled? Did you sufficiently describe the claimed invention so that someone else could get there? Or did you leave out crucial details?
- Another way to challenge a patent is to argue that the invention is an abstract idea or a product of nature and isn’t entitled to patent protection. This is referred to as subject matter eligibility. While this requirement has been around for some time, challenges on this basis have become more common in the last few years as the law has evolved.
So how do you know where your patents stand? Have your IP strategy attorney pressure test your patents and applications by taking them through a hypothetical challenge. How would a competitor try to take down the patent? Which are the strongest bases for challenges? Note that the pressure testing described here should be done in conjunction with an IP attorney to provide attorney-client privilege protections.
Have a look also at the potential of the portfolio to rein in the competition.
- What is the scope of the claims of your issued patents and pending claims of your current applications?
- Are they broad enough to keep a competitor from making just a small tweak to your product to take over the market?
- Do you have claims that protect against an out-and-out copycat as well as claim scope covering variations on a theme?
- Have you thought about the full scope of what you could patent such as combination products, methods of making the product and methods of using it?
Once you have your “pressure testing” results and have identified chinks in the armor, the next step is to add reinforcement. In some cases, your portfolio may be positioned so you can file additional patent applications. In other cases, you may be able to add or modify claims in pending applications or amend claims through re-examination or re-issue proceedings to issued patents. In some circumstances, it may be marshalling your defenses and carefully crafting a strategy that will emphasize and rely on the strong points of your portfolio while carefully treading around potential soft spots.
Why pressure test is advance of an actual challenge to your portfolio? Better to be prepared and proactively address the issues – or as others have put it – “When your pants are down around your ankles, that’s when everyone arrives.”