Season 1, Episode 5: Designing Patent Applications for Allowance

[Music] Welcome to episode 5 of How to Win with Patents and IP. This is Jackie Hunter coming to you from the worldwide Shedquarters of the Hunter Group in beautiful Decatur, Georgia. In this episode, I will be sharing with listeners how I am able to, along with my clients, of course, generate patent applications that are almost certain to issue within a short period of time the patent office and a reasonable cost, especially relative to the more traditional patent practices out there. And perhaps most importantly, with strategically broad claims that provide protection for an innovation that makes a meaningful difference to the customer. While I certainly can't guarantee that you will be successful in generating broad patent rights if you use some methodologies that I discuss in this podcast, I can say that these tools and techniques work consistently for my clients. Before I get started on the details of designing a patent application for allowance, I first need to do our regular bit of housekeeping. The views expressed in this podcast are mine as a commentator on IP strategy and business value creation using patents and IP. No information that I provide to you in this podcast should be considered to be legal advice. To be effective in deploying these tools in your own business and for your own business objectives, you need to not only be sure that you hire a IP professional or IP team that has experience in developing client-centric patents and other form of IP, but you also must be prepared to fully engage with the IP process because without effective management of your IP team, you cannot be successful. Put another way, your IP strategy is your business strategy and vice versa and business has to be engaged at all times. Now let's get started with the topic of how to design patent applications for allowance. In this episode of How to Win with Patents and IP, I'm going to be showing you how you could actually design a patent application for allowance. In other words, your company's ability to get a patent issued or portfolio generated that is aligned with your intended business outcome doesn't have to depend. It can in fact be planned. If you listen to the previous episode, you'll know that the collaborative process that I use with my clients and outside counsel results in almost all of our patent applications being issued in a short time. Each of these patents are meant to be strategic, that is to create business value that's meaningful in the relevant marketplace for each client. Because my clients are innovators, every single one of their patent applications has to be meaningful in that they have to be able to generate the return on investment in that innovation by generating patent rights that make that possible. And because this result is critical for my clients, we must do proper planning to prevent PISPOR patent performance. Not every patent matter requires the upfront planning that I'm going to be talking about here. Instead, this information is provided to help innovators. That is, those entrepreneurs or companies that are solving meaningful customer problems in the marketplace using products or technology for which those customers will pay. And additionally, that other companies will also want a piece of that value once it has been identified by the innovator and his investment of time and money. I need to point out that it's not just startups or entrepreneurs or early stage companies that are doing innovation that require protection with strategic patent rights. Established companies also do innovate. However, they probably do fewer innovations than they do inventions. In other words, there are patents that they need to obtain on a regular basis for incremental improvements in their existing product lines for which they already have customers. Nonetheless, when these companies are actually innovating, they're providing new solutions for their customers. They need to be able to distinguish the standard patent model from the patent model that they need to apply in order to make sure that they're able to keep their competitors from serving those same customers with those innovations. It's also true that entrepreneurs and startups may not effectively be innovating. They may actually be solving a need for which patent protection really won't be meaningful for them to be able to make money in that area by selling that product. So the first step in determining whether you need to design a patent application for allowance is to first determine whether or not this process is needed in a particular business situation. As we've talked about, patents rarely matter, but when they matter, they matter a lot. And when you have determined that patents are important for your particular business situation, you'd better be darn sure that you're going to be effective in achieving that desired business outcome. That is, you need to design your patent application for allowance. Now let's talk about how we do this. In order to be effective in doing this, we need to have the time of the client, both the business teams and the technical teams, my time as the strategist who's aligning the business strategy with the patent legal strategy, as well as the involvement of a highly skilled and business savvy outside patent council, when we actually get to the step of filing the patent application in the patent office. Let's talk about a hypothetical process where we design a patent application for allowance for an innovator. In my client intake process, I first make sure that the client can demonstrate to me the existence of a validated customer because if it's not a validated customer for the product or technology that a patent is meant to cover, that patent won't cover anything that anybody wants to buy and therefore will be worthless. Let me unpack that real quick in case it's not clear. A patent only has value if it covers a business model that has been validated. That is a product or technology that somebody will buy. If it does not, there is no product or technology that will be infringed by the patent claims. And therefore, it's worthless. It covers nothing. It's meaningless. So that is the first step to my gating process of moving forward to design a patent application for allowance. But just because you have identified a customer doesn't mean that that should be the end all be all of the direction you take to draft the patent application. In fact, that validated customer may just be a gateway to a broader set of customer value that you're providing. And if you are not successful in capturing that full set of customer value in the form of broad patent protection that covers all of the customer value, you're leaving that value on the table for others to capture without having to pay you. I understand this is an abstract concept. So let me try to bring it down with a practical example. Let's say that you're a CEO of a startup company that has developed a technology that can determine whether the levels of methane gas in a farming operation or getting too high. Of course, too high is relative, but let's just say there's a regulatory level to which farmers have to maintain in order to be within compliance. There's lots of prior methods to measure method, but most of these require very complex analysis systems that must be maintained by highly skilled workers that are very expensive to keep on your payroll. So even though the specifically validated customer for this company, let's call them sensor code, is interested in being able to measure methane in their farming operation. If we look at the issue from a higher level, are there other customers that can be served with this or similar innovations to that developed by sensor code? As a first step, what we'll seek to do is look at other environments where measurement of methane may be relevant. Significantly, sensor code CEO may have no clue what other environments may have methane as a compliance related issue, because they have only been working to identify needs in the farming sector. Certainly, the levels that are compliant or non-compliant in other areas may differ from that that are relevant in the farming sector. There may be also other applications that are adjacent to methane that may be relevant. So the first step in designing a patent application for allowance is to make sure that you ask the question properly as you move forward to draft a patent application to cover the innovation. In order to ask the question properly, you have to do your research. You have to go in and do searches to see how other people, how other innovators have addressed the issue of measurement of methane. Some of those prior art methodologies may have absolutely nothing to do with the agricultural farm sector. But because they were measuring methane, you need to know about them to properly frame your patent application. So let's put out the hypothetical out there. Our client, sensor code has developed a sensor that can allow us to measure methane generated from a herd of cows in real time without the need to have a chemist or technician on staff at all times to do the measurement. This means that a farmer can be compliant with government regulations at a much lower overall cost. This is a huge innovation in the farm environment, unquestionably. However, consider the premise that no problem is ever new, it's just new to you. And certainly there are other areas where it has been relevant to measure methane in the past. One example I can think of is in the oil field area. So if you file a patent application with claims, it's say a method of measuring methane in real time using a lab on a chip configured to extract methane out of the air and provide a Concentration of methane in the environment. If you go forward with a claim like this There's no doubt you're going to be dinged by the patent examiner because from all of these other methods of measuring methane But certainly the problem had not been solved You as innovator identified a problem that needed to be solved and you have solved it So if there's an unmet need that exists until you have solved the problem It is in fact novel and unobvious and you should be entitled to a patent But you just can't expect to get this result you have to plan for this result and my desired result is to get broad claims It that reflect the true scope of the innovation. So how do I do this? Well quite frankly, I have to go out and look at all the prior art and do what I call the sesame approach to getting Brad patent coverage as an aside you know that most of the things that we need to know in life We learn in sesame street in this regard sesame street or if you're much older your kids learned That one of the ways that we look at the world is which one of these things are not like the other So if I go out and look at all of the methodologies that are available for me to review That we're able to analyze methane in an environment I am going to see patterns and differences between how I have successfully done it for my customer Whose need was unmet until I was able to solve it for them and everybody else who was out there and these patterns And differences will allow me to create differentiation in the way that I'm doing it That is in fact not limiting to me as a hypothetical example What if we see in all of this prior art having to do with methane measurement and environment that they're all very noisy? Well all of these prior art methods are very noisy They probably won't be usable if you're talking about measuring methane in the environment of a cow herd Because of cows are subjected to repeated noise They may not be able to be as productive with milk and another hypothetical Perhaps the compliance levels for all the other industrial applications where methane has to be analyzed in real time in a particular environment Are much higher or even much lower than those that are applicable in the environment of a farm or agricultural operation Going back to the Sesame Street logic which one of these things is not like the other We're going to be able to craft a story as to why the problem had not been solved with these prior art methodologies And we're going to be able to identify a firmative language that can be used in our patent application and in our claims to distinguish that prior art Again, if the prior art worked, we wouldn't have to do the work to develop our own innovation Because of customers problem would have already been solved However, on paper after we file the patent application, those differentiations may not be apparent If we don't tell a good story to the patent examiner on why the problem had not been solved before we solved it Again, proper planning prevents PISPOR patent performance So how do I strategize to get something through the patent office to give me broad coverage to the analysis of methane in a farming environment versus all the other methodologies in the prior art of analyzing methane in an environment Well here, I'm losing a lab on a chip In other words, I'm using a sensor for the first time to measure methane in an environment Instead of needing an instrument in order to sniff the environment and do the analysis, perhaps in a big machine I've got a form factor that's much smaller That lab on a chip is likely removable from a device like a razor and razor blade model so I can use that as a point of differentiation Perhaps it has more or less sensitivity than the prior art methodologies and I can use that as a differentiation It's also possible that temperatures at which this methodology has to be operational is much more harsh and varied than you'd experience in the laboratory setting And this would be a point of differentiation To the extent that one or more of these differentiations that I found between the prior art methods and the methods that I am selling to my customer today can be added to the claims My claims will be different from all the prior art Moreover, if these added features are in fact not limiting Then I don't care if I add them or not even if they make my claims very long My claims will in fact not be narrower by doing this because my methodology won't work unless it has these features Think about it If my methane analysis methodology has to work between 0 degrees Fahrenheit and 100 degrees Fahrenheit and it has to be accurate in order for me to be compliant Do I care if I have to put a range of operation in the claims? Because if it doesn't have that parameter I can't sell it to my customers because my customers won't use it It won't be effective for their needs However, by putting that range in the claims I have clearly distinguished my claims over the prior art and can show that the prior art does not have that specific feature so I'm novel and unobvious over the prior art Very often I find what we actually need to put in the patent application in order to design it for allowance is not what the client brings to me in the first order That is they want me to help them protect the product that they plan to sell to the customer But the customer is not buying a product or technology They're buying something that solves their problem They're buying a solution in other words And by using that problem to define the patent application coverage and not the product or technology that enables that problem to be solved we can design a patent application for allowance I also know it's significant from experience that if you go through this exercise of looking at the prior art to distinguish and define your patent coverage by difference you can vary often on cover additional areas of protection and value For example, we think about the lab on a chip and methane analysis in a farming environment A farming environment is going to have very specific parameters that are unique to it versus all of the other industries out there Those parameters are going to dictate function of anything that works in that environment We then can start to hypothesize whether there are any other applications whether there are any other measurement techniques that may be satisfied using the lab on a chip in this example and we it may end up finding out that once you've solved the methane problem you've solved a bunch of other problems in that same environment Again, this is all hypothetical and I have countless examples where I have done this for specific clients over the years but unfortunately I can't share them with you because it would be confidential So, if I said to say however this proper planning by looking at the prior art and defining by difference is the reason why my clients are able to get broad, strategically focused patents that cover their innovation broadly and not just their inventions but it's not just defining the prior art by difference that gets us to the result that we want We also have to craft our patent claims strategically to give the examiner of roadmap to allow our claims So let's say for example in the methane lab on a chip example I write a claim that says a method of measuring methane in an environment using a lab on a chip configured to measure methane. Now my prior art review has told me that there's no prior art that is able to measure methane in an environment using a lab on a chip configuration. Should be free and clear, no problem Conceftually my patent claim should be able to sail through the patent office because there's no prior art because I've clearly distinguished it. However, I know that's not the case The examiner in the patent office is incentivized to reject me and because I know this is likely inevitable in any patent examination process I am going to set up the claims such that if I get my main claims rejected, my independent claims rejected I'm going to have backup claims in the claim set that if I have to write those features into the independent claims I don't care because they're non-limiting. The prior art that the examiner cites against me may be totally irrelevant maybe totally bogus but I don't really want to get into that argument unless I really need to rather I prefer to include claim limitations into my dependent claims that I can now write up into my independent claims that don't limit me in any manner. So looking at it from a strategy perspective I've effectively agreed with a patent examiner who's rejected my independent claims but not my dependent claims and I'm not even going to get into an argument with him about this because I properly planned and was able to say if the examiner rejects my independent claims I'm going to go ahead and take these dependent claims and not even worry about it because they're very very broad because I've planned it that way and again this allows me to design an application to be allowed without a lot of pushback from the patent examiner. Unlike many attorneys and patent agents out there I don't care how long my patent claims end up being when they're finally allowed as long as every element in those issued claims are non-limiting to my client remember our goal is to get broad protection for an innovation so that my clients can get paid back for the hard work they do to solve a customer problem. In most cases we need to do that quickly without making many claim amendments because we want these patents to look very broad to our competitors so that they end up having market making so that they end up having strategic value. A patent application that includes claims that are so broad to read on the prior art that have to be amended several times. to get the patent application out are worth far less than claims that are strategically crafted to look narrow so that they get through the patent office quickly without much pushback, but and yet are very broad in relation to the innovation that is being brought to the customer. I'll freely acknowledge here that what I'm saying contradicts what patent professionals are told from a very early stage. So longer the claim is, the less value it has. And in fact, this is how the bots, the software, the AI, analyze its most claims. The longer it is, the less it is worth. But that is not the reality of a situation. If a claim has non-limiting limitations, it will be very broad in application and therefore will have business value to its owner. My approach to designing patent applications for allowance also includes a strategy that some people find controversial. In that, it is my strong belief. And as I have shown by experience, when you spend the time to tell the patent examiner a great story about why what you're presenting to them for examination is novel and unobvious. And why in fact, it's a big problem in the marketplace. It is more likely that you will be able to convince the examiner that your claims are worthy of allowance. This approach is controversial because many patent attorneys have been taught that the less you say, the better it is for your client. At least because prior art will not be cited against you if you make admissions about what your application includes or does not include. I have no complaint with that general proposition. However, once skillfully made, a description of the prior art in how it does not solve the customer need that this particular innovation covered by the patent application addresses can be very helpful in greasing the wheels, if you will, for the examiner because you're setting up a case of why your client is entitled to get this patent application issued. I always explain to clients that patent examiners are people. Yes, they should be looking at your patent, your patent claims in relation to what their legal requirements are, but at the end of the day, they are the only ones standing between you and an allowed patent application. And why wouldn't you try to bring them along to be your advocate as you are trying to move your patent application through the patent office to attain the desired patent that broadly protects your innovation and the full scope of the value you're providing to the customer. Again, I said when skillfully done, this is an effective approach. I do have to admit that some of the worst riders I've ever seen in my entire life are people who write patent application. Indeed, many patents look like a technical wiring diagram or some equivalent in a particular technology. And I wouldn't want that person to tell a story at all, even if they knew what it was. But it's not the patent attorney's job to tell the story. They are not the business person. They are not talking to the customer. They're not generating insights from the market. While I do this as a strategist for my clients and include this story in a patent application that my outside patent counsel ends up filing, if someone does not have a team like I have been able to assemble, they need to be sure that they're properly equipped to prove somebody on their team who could tell a good story about the substance of the innovation and the value it provides to the customer. In this regard, I learned how to do this from a client I had several years ago. This was a chemical company that made polymers, polyethylene polyesters and a like. This is a kind of stuff that's in your clothes, it's kind of stuff that's put into bottles, this is the kind of stuff that's everywhere in our world. Notably, this company was an innovator in a business that it's otherwise commodity. And in order to recoup the value that it put into creating these innovations, the company had to be able to generate broad patent rights. Otherwise, they were innovating on behalf of their competitors because they would have no protection. I was outside calcant for this company, meaning that I wrote the patent applications and got it to the patent office. But before these applications made it to me, the research and development team, which included one senior scientist, some more junior scientists, and importantly a member of the marketing team, would create a detailed invention disclosure about not only the technology, the product that was being created, but also why it mattered. In some cases, this polymer company would spend millions of dollars and years of research to make one small change in the resulting polymer, or that change would create millions upon millions of dollars in value for the customer. For example, a fiber would stretch farther or it would be able to be heated to a higher temperature or any number of functional benefits that company had worked to develop for so many years. This research and development team knew what was missing in the market, as well as knowing what functional benefits their customers were seeking to obtain, even when there were hundreds very often of pieces of prior art that were potentially relevant. This meant that in order to get a patent application through the patent office, so that this company could recover the investment made in this innovation, the scientist had to be able to present to me a framework from which I could draft a strong story, not only of why the ostensibly very narrow improvement made by my client was broadly patentable, but also why it made a meaningful difference in the marketplace. When done correctly, knowing the prior art and being able to describe why it's different from what your client is doing is a lot more effective in allowing your client to obtain broad patent protection from this experience, having a client that was innovating in a very crowded technology area. Even while the innovations that came out of its research and development process created significant value for its customers, from which it wanted to be paid for its hard work of bringing that innovation to the customer, I learned that it's absolutely necessary in situations where innovation is being delivered. You have to be able to explain to the patent office why what you're doing is meaningful. Again, this is probably controversial, but it works for me and my clients, so I'll continue to do it. So to recap this discussion of how you can design patent applications for allowance, there are four steps. First of all, you have to start with the customer. That is the focal point of any protection. You also have to go into the prior art and understand the prior art to help define the protection that you seek to achieve. When drafting the application, you have to strategically design your claims to give the examiner a roadmap to allow you, and to get through the examination without having to amend your claims in a way that gives limitations that you don't want. In other words, you have to design your claims with non-limitine limitations, and it's those non-limitine limitations that are derived from your knowledge of the prior art. Lastly, you have to be able to tell a story. Why is your innovation that you seek to claim different from everything that's come before? Why is it not just novel and unobvious, but also why does it solve a big problem that is meaningful to the relevant customer? Collectively, these are the four elements that go into proper planning that prevents PISPOR patent performance. In other words, if you do this correctly, your application is designed for allowance and it will issue, unless there's an unforeseen development that cannot be predicted. At a minimum, using these four elements to craft your patent application and reduce the risks that your patent application will not issue, and as any business person knows, the more risks that you can take out of a business process, the more likely it is that you'll be able to control what happens. Well, that brings us to the end of this episode of How to Win with Patents and IP. I look forward to sharing more insights with you about generating business value from intellectual property and patents in subsequent episodes. If you'd like to jumpstart your learning, go ahead and take a look at my IP asset maximizer blog at thehuttergroup.com, where I've been writing about patents and intellectual property strategy and related topics since 2008. If you stay with me and apply these tools and techniques in your own intellectual property and patent efforts, you'll not only be able to get patents and IP, you'll be able to win with patents and IP. See you next time. [Music]