May, 17th, 2021

By Stephen Ball

Development of a commercial product is often the catalyst for seeking patent protection. This is understandable as owners want to protect their R&D investment. However, focusing on one’s own product can be short-sighted. Patent rights can be a moat around a market that employs the technology, and not just a product. The wider the moat, the better protection.

A common misconception is that a patent gives the right to practice the patented product. In fact, a patent grants the right to exclude others from making, using, and selling the claimed invention. So even if one’s product is patented it may still infringe the patent rights of another. Given that the patent right is conferred as an offensive weapon, it makes sense to look beyond one’s own activities.

If an applicant begins the patent process by focusing on their own product there is the tendency to develop tunnel vision. It becomes less about getting the broadest possible protection than about “covering” the product, presumably to justify the investment. But this may add minimal value if a competitor can design around patent claims.

Just because a commercial product operates one way, it should not limit patenting alternative ways. To thwart the competition the applicant should be looking to protect various ways of employing the technology, including how competitors are or will design their own products. Competitors may be watching published patent applications and enter the market after trying to design around published claims.

In addition, markets and technologies change over the course of a 20-year patent term. What may not be a preferred embodiment now may be in 10 years, since consumer tastes, manufacturing processes, and materials all change.

Good claims use varying levels of breadth and depth. This is one reason why use of continuation applications is an important part of patent strategy. Once a set of claims is granted, the scope of protection can be varied in child applications, thus creating a web of protection to deter competitors. This also gives the applicant the ability to draft claims to cover competitors that enter the market later with alternative designs.

Strategic patent claiming is an art, and one goal should be to build a moat around the market, and not just a commercial product. Focusing on the product is like putting a gate up in the middle of field–competitors will just walk (design) around it.

WHIPgroup is leading counsel for U.S. and international technology companies. We specialize in patent and trademark law.

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