How to Get Broader and Good Quality Patents

By Shikhar Sahni
March 19, 2016

quality-excellence-checklistPatents, for a long while, have been an integral part of business development strategy. Companies like ARM and Qualcomm, for example, have built their business around patents which constitute a major part of their revenue. And the quality of their patents, for sure, is playing a key role in it.

Lowballing on patent quality has its own risks. It does not only affect the direct income from royalties but can also affect the revenue from proprietary products. Patents by nature exclude others from using the protected invention. Therefore, products backed by strong patents have less likelihood of copycats appearing in the market and even if it happens the chances of recovery on the basis of patent infringement still holds. A poor quality patent or a patent with unnecessary limitations on the other hand, can compromise this intent and can impact the entire business.

That being said, it becomes imperative to not ignore patent quality anymore. And before we go deep into the subject, let’s be clear that quality of a patent is different from that of an invention. Patent quality lies in the scope of claims, which, impacts the objective of getting a patent. One may seek a patent to just stop competitors from using the invention or for revenue generation through technology licensing. But, irrespective of the objective, quality remains a pivotal element.

Let’s explore some ways which can help IP councils get broad and good quality patents.

  1. Narrow Patent Claims – Narrow claims, more often, gets a patent granted fast as the application undergoes less office actions compared to the one with broader claims. This approach, though, appears lucrative on the surface, however; comparatively, will become less rewarding in future.

While working with IP councils, I came across many patents which assignees weren’t able to enforce due to that unnecessary element in an independent claim which could have been shifted to dependent claims easily.

Given that huge investments were made for building a patent portfolio, such handicapped patents beset an IP council working on its monetization, as these patents flunk when put into use. Hence, it becomes mandatory to judge broadness of claims to get strong patent which can help to keep competitors at bay and also extends revenue in the form of royalty.

Example – The clause mentioned here under mandates the presence of two devices which is shown as bold and underlined –

“sending notifications to each of the two wireless communication devices in response to the processing of the position location data determining that the position location data indicates that the two wireless communication devices have become in proximity to each other;”

The presence of two devices can limit the scope of infringement while providing a loophole to competitors to come up with alternatives where the two mentioned devices may belong to separate entities, and the clause may not be fulfilled by either of them. Hence, it’s a big limitation in a claim and can be changed to something like –

“sending notifications to at least one of the wireless communication devices in response to the processing of the position location data determining that the position location data indicates that the two wireless communication devices have become in proximity to each other;”

A small change can bring many products under the scope of the patent. One can imagine losing huge profit on the basis of narrow claims.

  1. Design Around – Claims of a patent focusing only on the central idea of the invention, sooner or later becomes a dead load on a business. It is because, these patents ignore design around and later a competitor finds a way out to implement the invention in his products without infringing any of its claims. And there is no end of examples where a broad patent was unable to stop competitors to manufacture products on the patented concept.

Thinking that a broad claim is all you need, is a fallacy. One also needs to ensure sufficiency of broadness which includes proper coverage of design around to strengthen the quality of a patent.

Let’s consider design around as hacking into the invention concept. After all, one has to just somehow shunt out the ‘All Element Rule’ to pave the path to use the invention concept and avoid the risk of infringement.

Difficult! One may think.  But, not an impossible task, though. If someone does that, the heavy investment made on the patenting activity will go in vain.

For example, let’s use the same clause to illustrate design around that I used earlier.

Original clause:

sending notifications to each of the two wireless communication devices in response to the processing of the position location data determining that the position location data indicates that the two wireless communication devices have become in proximity to each other;

If the applicant moves ahead with the above mentioned clause, other companies may use the invention by doing some minor changes in their product. A competitor, for example, may use the invention by adding a third device.

To overcome such possibilities, multiple independent claims are filed. The variation of the clause will look something like:

sending notifications to a third wireless communication device in response to the processing of the position location data determining that the position location data indicates that the two wireless communication devices have become in proximity to each other, wherein the third wireless communication device is interested in receiving the location data of at least one of the two wireless communication devices;

  1. Proper Scope i.e. covering out of the blue application areas – A good quality patent encompasses the proper scope of an invention, that is, it should cover all existing as well as futuristic application areas.

An invention normally becomes viable in many application areas depending on the deep correlation of technologies and also because of the ever expanding inter-dependency model of technology. That said, one should never limit the invention only to the research areas mentioned by the inventor(s).

There are many patented technologies that initially were supposed to be for a particular field but later found applications in a totally different field. Kodak, for example, filed patents in film development technology that was meant for cameras which later found applications in semiconductor chip manufacturing.

Let’s take another example –

Example – If an invention is related to GPS technology one may consider GPS devices, maps in mobile phone and car navigation systems as common application areas for the invention. This is what inventor may suggest. But is that all? No.

A technology landscape would reveal that from a mobile phone a user can access internet which offers online advertisement. Now if someone would have checked the technology relationship a decade ago, he would have got a hint about location based advertisement by connecting the dots from GPS to online advertisement, which is very common these days.

All this is possible with the help of a landscape analysis where one gets to know about:

  • The intersection of the invention with other existing technology areas.
  • The level of penetration into the existing technology areas.
  • Hints about futuristic expansion for the invention.
  1. The Depth of prior art searched – Based on the objective for the patent, the depth of prior art search may vary. If one intends to get a patent with the objective of offensive patent filing i.e. to sue others in future, it’s better to be thorough in the beginning then regret later when defenders invalidate the patent. Similarly, if a patent is just filed to help in technology exchange or show IP strength to competitors but not as a litigation tool, a deep prior art search may not be required and one can rely on the examiner search alone.

However, don’t forget that an examiner is also a human being and ‘human errors’ are possible under time constraint from his end, too. Therefore, the decision to perform deep prior art search depends on one’s objective which further guides the decision to travel an extra mile to find what might have been missed by the examiner.

Conclusion: These strategies, on the surface, appear obvious and more often than not, get ignored. Many IP councils, however, are targeting broad and good quality patents and chances are that they are already using these to keep their clients one step ahead of the competition.

What will you do with this information? Will you be taking advantage or will you let this information get buried in the pile of information that crosses your mind every other day? Now the onus is on you to decide.

The Author

Shikhar Sahni

Shikhar Sahni is a Group Manager in GreyB (An IP consultancy which assists law firms and corporate companies in their IP life cycle challenges/ mandates at various stages on a business and strategic level through technical searches and analytics on patent data.) He heads an operation team involved in various IP consulting services. His expertise as an IP professional lies in patent strategy and technology consulting. He has worked with some of the fortune 500 companies, universities and individual inventors in variety of IP projects. He is specialized in IP acquisition and monetization services, patent analytics like landscape, portfolio and competitive analysis and prior art searches.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 5 Comments comments.

  1. Ken March 19, 2016 8:52 am

    ” A competitor, for example, may use the invention by adding a third device.”

    I don’t think this would be so in that case, unless there was either a negative limitation explicitly precluding a third device or a closed transitional phrase (i.e. saying “consisting of” instead of “comprising”). As written, what I see there appears neutral as to whether a third device is present or not – unless perhaps I missed something.

  2. Deon P Hugo March 20, 2016 5:53 pm

    I agree with Ken. Changing to; ” sending notifications to a third wireless communication device ” won’t help to avoid the claim as originally drafted using the phrase “sending notifications to each of the two wireless communication devices”.
    By alleging that you are sending it to a third wireless communication device means you are sending it to two. You are still within the scope of the original unamended claim.

  3. Shikhar March 21, 2016 3:15 am

    Hello Ken,

    The example has been given in context of position location system (PLS) which is responsible for sending notifications to two wireless devices when the devices come in proximity of each other. Here, I have taken the perspective that PLS will directly send the notifications to the two wireless devices. Whereas, in case of design around the communication of PLS will be with a third device to indicate the same and not directly with each of the wireless devices.

    I understand that this is a specific example and somewhere it depends on the other elements/clauses and relation of the elements also determines if design around is possible or not.

  4. Anon2 March 21, 2016 6:59 am

    Ken @ 1

    If the “invention” is about the proximity of the two devices and tracking that information, then it really does not matter where it is tracked or what devices are notified. In the context of that invention, notifying the two devices is overly narrow. The broad claim, if possible would likely leave out any (as much as possible) specifics about notification… here rather than going for the broadest claim covering all “work arounds”, the claim attempts to cover the specific case of a third device.

    Just a guess.

  5. Deon P Hugo March 21, 2016 2:49 pm

    Yes I agree with Ken. I would put the third device option in a subsequent dependant claim.
    What I said previously is not quite correct. You can get a patent for an improvement of the original invention. You would however not be able to implement the improvement without infringing the patent of the original invention. You would however be able to prohibit the patentee of the original invention to implement your improvement. This is so because a patent is a “negative” right. It does not give you the right to do something, but rather preventing others from doing something. What could happen in such a case is that the patent holder of the original patent and the patent holder of the improved invention cross licence each other.