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What Is Patent Quality? A View from Silicon Valley

 

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Since the USPTO launched its formal patent quality initiative in 2015, the visibility of patent quality has continued to rise. The Office’s investment in events such as the Patent Quality Summit (Mar. 2015) and Patent Quality Conference (Nov. 2016), and programs like the Patent Quality Forum Series (Nov. 2016) has raised quality as a priority concern for everyone in IP.

While the USPTO’s efforts will ultimately influence government policies and corporate practices globally, we thought we’d secure a patent quality perspective from an IPfolio customer. A pledge of anonymity secured the participation of this VP of Intellectual Property for a U.S. software company. (His pseudonym is Paul).

What was abundantly evident during our conversation is how deliberately he spends his IP budget to create a corporate portfolio notable for quality over quantity. Indeed, patent quality has informed pretty much every decision he makes while building, monetising and securing it. The first part of our conversation focussed on defining patent quality, while the second half (to be published separately) covers how he measures it.

(As usual, statements should not be construed as, and should not be relied upon for, legal advice in any particular circumstance or fact situation).

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“The quality of all patents matters a great deal. It is central to the DNA of current and future innovation, and to the credibility of inventors and their inventions, patent systems and right holders around the world.”

The Puzzle That is Patent Quality, WIPO Magazine, August 2015

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IPfolio: Thanks for speaking with us, let’s start at the beginning, how do you define patent quality?

Paul: It’s very hard. Everyone seems to have a slightly different opinion, dozens of which are instantly available through a Google search.

In fact, it’s one of the hardest problems in terms of grounding yourself as an IP professional. After prosecuting and litigating hundreds of patents, I found my answer in litigation. My definition is based on this question: How effective can this patent really be in court?

The degree to which you can assess patent quality is whether it is effective in litigation. At the end of the day, everything directly or indirectly leads to a patent’s effectiveness in litigation. As an answer to your opening question, I think this makes the most sense to corporate IP departments. Now, you’ve probably already asked yourself how effectiveness can be judged

The answer is very subjective. There is a lot of subjectivity that goes on in the layer below as far as what creates a patent that’s most litigation-ready or successful in litigation.

I have always found one thing to be very true: litigation is not an event; it’s a process. It’s a multi-year process comprised of many actors, egos and phases. Tension is a common characteristic. In my litigation experience, I’ve not infrequently found myself wishing something along the lines of “I wish I had had that phrasing in the specification.” In a glossary of psychology terms, it could be listed as Patent Attorney’s Regret.

I think many IP counsel with litigation experience reading this will nod their heads in agreement.

They will certainly understand this desire for that support, whether to defend the claims or rewrite new claims or secure continuation. Something else I’ve learned, however, while litigating, which is really important to understand, is that a patent doesn’t necessarily need to have its claims be absolutely rock solid. 

A Three-Step Process for Developing a Litigation-Worthy Patent 

What do you mean?

Well, there are a lot of knobs you can turn to make a patent most qualified for litigation. My whole philosophy and patent filing action plan is to start with the low-hanging fruit.

This starts by meeting with the executive team and individual inventors so you can have a very deep understanding of the technology and business. Understand how this patent will support the core of the business. Identify potential infringing parties. Explore options to prevent others from devising “work-arounds.” Define several technical implementations you could pursue.

After finishing this exercise, focus on pushing the inventors to work through all the technical implementations. Make sure you provide a significant amount of detail to the specifications, and emphasize clarity when describing your inventions. This is my first step.

Step number two is to keep your options open. Specifically, keep your patent filings open through continuations. Keep as many valuable foreign filing options available as you can. 

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The third step is patent hygiene. It needs to be good. Our hygiene process emphasizes these points:

  1. Do you cross your T’s and dot your I’s? 
  2. Do you have everything in line? 
  3. Do you file provisionals?
  4. Are inventors educated on how to treat intellectual property?
  5. Do you claim priority in the right manner? 
  6. Do you cite references appropriately and accordingly? 
  7. Do you make sure that you’ve paid careful attention to dates? 
  8. Do you pay attention to prior art that you have been made aware off? 
  9. Do you you take care to navigate around the prosecution so as not to create a lot of prosecution issues and estoppel when you are trying to get the coverage you intend to get? 

By coverage, do you mean divulging too many secrets?

In general, you can eliminate this aspect by being clear about what you are writing. I don’t mean adding more wording for the sake of adding more words. I mean extra words to clearly explain and expand on the thought process of the technical implementations in the patent application.

At a practical level, patent quality starts with one’s familiarity with the technology, putting in enough time and access to talented attorneys who really understand patent law. If you can say, “we understand the space and technology, we’ve spent a lot of time thinking through all possible implementations and details, plus we have great attorneys,” you should feel pretty confident about your patent quality. At the execution level, these are vital.

To summarize, to create a wide range of protection, you want to have thought about ways to design around it, and have invented and have thought of alternative embodiments. Taking a comprehensive approach like this enables you to get very good claim scope over time if you can keep your patents open. The key is to spend more time on each patent.

Fantastic. Whether it’s asking what is patent quality or measuring it, patent quality is a very topical issue right now. We look forward to hearing how you align it with measurement and metrics.

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