Will my patent hold up in court?
According to the 2014 Patent Litigation Study by Price Waterhouse Cooper, the number of patent litigation cases filed was close to 6,500, and the number of patents granted was close to 300,000 in 2013, so while the chances of you ending up in court at some point with your patent are likely very small, they are not non-existent. Mega-cases also continues to make headlines, including one involving an “at-risk” launch of a generic pharmaceutical that was settled mid-trial for $2.15 billion, and another matter involving medical devices where post-trial bench consideration added substantial punitive damages, potentially bringing total damages to over $1 billion.
As a patent prosecutor, it is frankly a bit intimidating that a document that I create at my computer can be subject to such scrutiny, and that there can be so much at stake for the applicant based on what I write and what judgment calls I make while the application is being examined. At the drafting stage, it is impossible to predict whether the resulting patent will prevail in a court proceeding. However, given the possibility that the patent may be litigated some time in the future, I consider it to be prudent to keep this in mind when drafting applications. What are then some things I typically think about?
- Using different claim types
I try to protect the invention in multiple ways in the application. In many ways, this is an extension of the “eco system” that I discussed in an earlier blog post, but within the context of a single application. One example is to use method claims, apparatus claims, method performed by an apparatus, method of using an apparatus, etc.
- Considering “Means plus function” types of claims
S. Patent Law explicitly allows for “pure” functional limitations, which are often expressed as means+function claims (e.g., “means for writing a blog post”). This type of claim can often give a different scope of protection compared to just reciting a particular machine, etc. (e.g., “a computer.”)
- How will infringement be proven?
I always consider how hard it would be to “design around” the patent claims, and how infringement might be proven. For example, I consider questions like: Does an apparatus infringe without being turned on? All of the time when it is turned on? Just some of the time? Does a computer program claim need both a client and a server to be infringed, or have the claims been crafted such that only one entity is needed for infringement?
- Making use of dependent claims
I attempt to use dependent claims with “a bite” that actually address the novelty of the invention from different directions. E.g., if the independent claim recites a remote control, it is much better to have a dependent claim directed to the remote control can use dual frequencies to control separate devices, than a claim directed to the remote control having buttons with different colors.
- Aligning patenting strategies with your business goals
As was discussed in one of the first blog posts, it is important to let your business goals (as well as the activities of your competitors) direct your patenting efforts, rather than just having a “technology driven” patenting strategy.
If you draft an application with these things in mind, the result should be a more solid application that will give you at least somewhat of a leg up in a patent litigation situation. However, as Benjamin Franklin is rumored to have said: “In this world nothing can be said to be certain, except death and taxes.”
Mollborn Patents | Patent Protection Made Easy
Fredrik Mollborn has been helping companies protect their intellectual assets since 1997 in the U.S. and abroad. If you are looking to secure your intellectual property, reach out to Mollborn Patents for a consultation.