Red Patent

Tips to Improve Your Chances

A strong majority of people seeking patent protection to protect their products or technology leave the details the drafting process to their patent attorneys. That is, given the specialized (and, frankly, arcane) nature of the patenting process, even highly accomplished business professionals believe that a patent specialist (i.e., attorney or agent) is better equipped to understand how to best describe their invention to the US Patent Office (”USPTO”). This can be an ineffective way to handle the front end of the patenting process because it can result in the process being more contentious. Such contentiousness can result in narrower claims than desired and can make the patent take longer to issue and make the process considerably more expensive.

In determining whether a client’s invention meets the legal requirements for patentability, a patent specialist thinks about how to legally distinguish the invention from those that have come before. Specifically, the patent specialist must demonstrate to the USPTO-as represented In the person of a patent examiner-how the invention is new and not obvious in view of what others have done previously. The patent specialist must also determine how to describe the invention in a way that satisfies the precise technical and legal requirements. While working in this “legal silo,” a patent specialist quite possibly does not have any knowledge about the commercial benefits the invention provides because the client’s business team typically is not involved in the patent drafting process. This means that when drafting the application, the patent attorney presents the invention in relation to the “check boxes” that the invention must satisfy in order to meet the legal requirements of patentability.

Moreover, even if such business information is available to the patent specialist, they rarely possess specific expertise in marketing or business. 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 “the best thing since sliced bread.” Most patent attorneys thus will wholly ignore what I call the “Wow Factor” associated with an invention.

This “Wow Factor” sounds quite a bit like marketing, doesn’t it? Exactly! And, given the fact that business professionals best understand the benefits their products and technology provide over others that have come before, a critical factor in a successful patenting effort is to not only demonstrate 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 charged with building a business case for the product or technology associated with the invention. While often absent from the patent drafting process, I believe that this marketing story serves as a critical factor any successful patenting process.