Feature

Creativity in Enhancing the Quality and Size of Patent Portfolios

Nate Phares and Ken Hartmann

©2018. Published in Landslide, Vol. 11, No. 1, September/October 2018, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

One of the most challenging choices for an organization’s patent strategy is whether to focus on quality or quantity. A small number of high-quality patents may provide value and solid protection for some inventions, but innovation can occur at a fast pace, which may require rapid filings at a high volume. When presented with the challenge of increasing portfolio size without sacrificing patent quality or ballooning the budget, you, the patent practitioner (whether in-house or in private practice), may need to take creative steps to increase the number of ideas that are harvested from inventors, the number of patents that can be obtained for an idea or group of ideas, and the efficiency with which patents can be drafted. This article discusses several creative strategies to help grow a patent portfolio for your clients, whether they are a business unit of an organization or the organization itself. These creative strategies can be implemented prior to reaching the prosecution phase, both before patent applications are drafted and during the application drafting stage, without simply increasing patent expenditures.

Techniques for Engaging the Inventor to Increase Invention Disclosures

Inventors are at the core of innovation and a company’s patent portfolio. Accordingly, inventor outreach is very important for your clients that seek to grow their patent portfolios.

Provide Patent Education for Inventors

The strength and quality of a patent portfolio can be improved by the inventors’ knowledge of the value of patents to the company and their willingness to participate in the patent process. As such, it is important for companies to educate their inventors on what it takes to attain a patent, how a patent is helpful to the company, when a patent can be attained for an invention, and the like. As patent practitioners, it is important to learn what your clients want out of their intellectual property, so that you can relay this information to the inventors during inventor interviews and client visits. You may consider offering patent education presentations or workshops with business units or engineering groups of your clients. These presentations or workshops may help to develop not only your relationship with your clients and inventors, but also the relationship between the inventors and the patent process.

Encourage Inventor Incentives

For your clients, whether they are business units of an organization or the organization itself, it helps when they provide incentives to the inventors. For many organizations, the patent process is not factored into an inventor’s day-to-day responsibilities. As such, many times inventors are disinterested or unwilling to participate in the patent process, as they may not feel adequately compensated for time spent on the patent process (which can be significant). Accordingly, if companies seek to grow their patent portfolios, it is important that they find a reasonable compensation structure for their inventors. This can be a monetary incentive or a nonmonetary incentive such as a banquet, a plaque, or other means of recognition. All of the above have been shown to have a positive effect on patent filings.

Forecast Innovation

Enlist help from inventors, engineers, and scientists to try and determine what the future might hold. For example, you might hold (or encourage your clients’ counsel to hold) proactive brainstorming sessions with inventors that focus on the future of a market or technology and forecast what that market or technology might look like in five years, 10 years, or the like. To facilitate brainstorming during these meetings, bring information on the current portfolio, information identifying trends in the market or with competitors, the current overall state of the art, etc. Though such meetings may typically take place from a business perspective, encouraging your clients’ patent development groups to be involved can be beneficial to securing protection and generating a patent portfolio on products before the products are developed or released.

Analyze Products and Services for Intellectual Property

Consider holding (or assisting clients in holding) reactive meetings to scrub your clients’ newest projects or products for intellectual property. This can provide fertile ground for developing your clients’ patent portfolios. Often, an inventor may not realize that a new project, product, or service (e.g., developed in response to a client’s customer requests) may create some intellectual property. Also, the inventors may be focused on “their” part of the innovation, and may not be considering the big picture of the product or service, where other patentable material may be found. As such, it is important, before launching new products or services, that your clients hold a thorough review of the products or services to identify any potential novel aspects that have yet to be covered by any patent filings. These practices can help to ensure that every aspect of your clients’ products or services is protected.

Maintain a Positive Relationship with Inventors

Engaging the inventors is key to growing a client’s portfolio. Once the inventors are engaged and the incoming number of disclosures increase, our duty as practitioners is to limit the amount of stress involved in the patent development process to ensure that the inventors continue to submit invention disclosures. As such, it is important to keep the application drafting process as pain-free as possible for the inventors. That means providing a quality patent application the first time to limit the amount of back-and-forth during the review process and to keep the inventors satisfied so that they are not turned off by the idea of filing patent applications on their inventions. To this end, try to get everything you need on the first call with the inventors, minimize questions to the inventors after this call (whether embedded in the draft or via correspondence), and provide a complete draft that is ready to file as your first draft.

Application Drafting Techniques to Increase Portfolio Size and Keep Pace with Increased Number of Disclosures

As you implement the process changes described above, you are likely to see the volume of invention disclosures received and corresponding volume of applications that need to be drafted increase. It is not always easy to handle an increased workload—you do not want to end up promising more than you can deliver. How can you scale up your operations, whether you are in-house or in a firm, to provide quality work for an increased number of inventions and filings? Also, how can you, as a drafter, efficiently draft patent applications to quickly increase the size of the patent portfolio without sacrificing the quality of the patent portfolio?

Identify Continuation Opportunities While Drafting

File multiple applications or continuations to cover many different aspects of the invention. This goes hand-in-hand with encouraging the inventors to think in a big-picture fashion about the entire system surrounding their invention. Take a proactive approach to identifying different aspects of the invention at the drafting stage, following up with inventors for the necessary support, and flagging such material for quick filings in parallel with the parent filing or down the road as continuations. By identifying material for related applications early, you can ensure that you have good support for this material in the specification, thus improving the likelihood of success in prosecution.

As an example of an effective strategy to increase the size of your clients’ patent portfolio, when writing a patent application directed to an innovation in a client device, consider a continuation claim set to cover actions of the server that would converse with the client device. If you plan on filing this continuation claim set, be sure to provide adequate support at the application drafting stage. For example, you might consider drafting one large specification to cover the parent and any continuations, which saves review time and drafting time. To further improve readability and coherence of the patent application, consider using separate sections of the application for each claim set. For example, each separate claim set may have its own group of figures, so that the description of a single invention is not scattered throughout the application. This reduces repetition and improves readability, which saves both time and money for you and your clients.

While continuations can be useful in increasing the quantity of patents in your clients’ patent portfolio, they may add little value unless considered early in the drafting phase. A continuation to the same embodiment of an invention that only slightly broadens or narrows the earlier embodiment may add little value to your client’s patent portfolio. However, if you take a proactive approach and loop in the inventors on a patent application, you are more likely to succeed by filing continuations that complement rather than overlap the scope of the parent application. Filing a continuation (as opposed to filing a separate patent application) can also allow the claim to be picked up more quickly for examination, likely by the same examiner, and can give the drafter a chance to tailor the claims based on prosecution of the parent application. Accordingly, you can quickly develop the size and quality of your clients’ patent portfolios through these continuation practices.

Improve Drafting Efficiencies

The structure of the patent application also can help or hinder your efforts to enhance your clients’ patent portfolios. For example, repeatedly generating well-structured patent applications that efficiently and thoroughly describe the inventions benefits you and your clients by saving time for the drafting attorneys, reviewers, and prosecutors further down the road. Conversely, providing repetitive and confusing patent applications can obfuscate the inventions, slow down the drafters and reviewers, and reduce the likelihood of obtaining patents. As such, the following strategies for structuring the patent application and working with your staff can improve efficiency in drafting the application, which can ultimately help your clients quickly and effectively enhance their patent portfolios.

To be able to quickly increase the size of your client’s patent portfolio, you need to be efficient. One frequent time-waster when drafting a patent application is repeating subject matter without reason. Think about ways to reduce the time spent rehashing material that you have already covered elsewhere in the specification. For example, you might open with a problem/solution statement, and then use the leading figures to do the bulk of the description of the invention. This problem/solution statement can be brief—just a few paragraphs to tee up the invention. Then, use example figures to describe how the invention works and any reasonable alternatives for practicing the invention.

Frontloading the substantive description of the invention can help to keep you from jumping around, thus losing focus. For example, you run the risk of repeating yourself if you describe part of the invention in an overview or example figure, then describe part of the invention (whether the same part or a different part) in a flowchart figure. Frontloading the description of the invention can also keep you focused on what the invention is, rather than getting lost in alternatives that are unlikely to be valuable. Of course, some description of alternatives is useful for prosecution, but this can be done in the description near the beginning of the application. Accordingly, frontloading your description of the invention reduces the risk of retreading ground you have already covered, which will further improve your efficiency and increase bandwidth for expanding your clients’ patent portfolio.

On the same note, when applicable, consider using flowcharts to provide literal support of method or process claims. This is particularly helpful when you have frontloaded the description of the invention. For example, use each independent claim step (and possibly dependent claim steps) for a different flowchart block. In the detailed description, write a paragraph describing the flowchart block at a high level, then explicitly cover dependent claims relevant to that flowchart block. This gives you dead-on claim support for the jurisdictions that require it while saving time and money that might otherwise be used to repeat yourself in the description of the flowchart. The technique of using flowcharts for literal claim support also reduces the time required to prepare that part of the application.

Involve Support Staff and Technology to Assist in Drafting Process

Think about ways that an assistant can help you effectively increase your bandwidth. For example, you might show your assistant how to prepare a template or shell of the patent application. Consider preparing a rough sketch of the drawings by hand. Your assistant might prepare digitized drawings, based on such a rough sketch, using Microsoft Visio or a similar program. At the same time, your assistant could prepare a template for the specification based on the drawings. This template can include the “Brief Description of the Drawings” based on how you numbered the drawings, generic introductions and conclusions for each of the drawings (e.g., “Fig. 1 is an example of . . . ,” “As described above, Fig. 2 is provided as an example and other examples are possible . . . ,” and so on), and flowchart block introductions (e.g., “As further shown in Fig. 3, process 300 may include . . . (block 310)”).

In many cases, a drafter will draft many applications in a particular technology area, especially when working with a client that has a growing patent portfolio. It is common to reuse old drawings and descriptions to save money and review time. Think about broadening your database of part names, drawings, text, and boilerplate to be accessible to many attorneys at your firm. For example, you might create a searchable database of drawings and descriptions that you think may be useful for future applications. You could paste the image file (Visio, PDF, TIFF, etc.) on the first page of a Word document, and put the corresponding description on the second page of the Word document. Windows provides a “tags” function in the properties of a .docx file that you can use to assign searchable tags to the file. This allows you to search, for example, “cell phone user interface” and find matching tagged drawings. Other drafters can add their own searchable drawings and descriptions to this database as is expedient.

Conclusion

By educating and involving inventors in both a proactive and reactive fashion, you can improve your visibility of the upcoming landscape and glean additional filing material from innovations. With smart continuation or parallel filing practice, you can secure additional patents on related aspects of innovations or products while reducing drafting and prosecution costs. Furthermore, streamlining your application structure, making judicious use of assistants, and creating a parts/descriptions database can reduce time spent per patent application while maintaining or improving quality. If you use these suggested approaches, you can increase the size of your patent portfolio and increase throughput without sacrificing the quality of your client’s patent portfolio.

Nate Phares is an associate at Harrity & Harrity, LLP, in Fairfax, Virginia, where he specializes in patent preparation and prosecution.

Ken Hartmann is an associate at the same firm, where he specializes in preparation and prosecution of electrical, mechanical, and electro-mechanical patent applications.

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