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Patent Filing as a Competitive Strategy

Gary M. Pace, PhD, Vice President, Corporate Development, and General, Quill Medical, Inc.

The first thing to recognize is this – all patent strategies are “blocking” strategies.

First, some background. Rights to the discoveries of inventors are secured by the granting of a patent by the U.S. Patent and Trademark Office. These patent rights are a grant from the Federal Government conveying and securing for an inventor the exclusive right to make, use, and sell an invention.

Granted patents provide to the owner the right to exclude others from practicing the invention (e.g.., making, using, or selling it). In other words, granted patents do not give you the right to practice your own invention, only the right to exclude others from doing so.

Let’s illustrate this point. You have a patent for a car, and it has wheels, an engine, a body – all the typical parts. Your competitor, however, has a patent for the steering wheel in your car. The “right to exclude others” means that your competitor can exclude you from using the steering wheel in your own invention. Without a license to the steering wheel patent, you’re going nowhere in that car.

Here is another, less fanciful, illustration – a desktop computer. It is the same principle – the owner of the patent for the I/O bus can prevent you from using that CPU for anything useful.

So, how do you know what is your patented invention? An issued patent ends with “one or more claims particularly pointing out and distinctly claiming the subject matter that the applicant regards as his invention.” It is the claimed invention that is regarded as the property right encompassed by the grant of a patent.

A patent claim is just a sentence that describes, ideally with care and clarity, the patented invention. Note that patent claim interpretation is a legal issue and patent attorneys with expertise in the subject matter of your business field should be consulted.

Patent protection is available for machines, processes, articles of manufacture, and compositions of matter. The most familiar form of patent is the utility patent, which includes electrical, mechanical, and chemical types. The subject matter of patent protection has evolved as technology has developed and progressed. In recent years there has been much discussion and debate, and some confusion, regarding the patentability of living matter (non-naturally occurring forms which are the product of human ingenuity), software, and business methods, but it is now well established that all of these may be patented.

You will often hear the term “freedom-to-operate.” If you have freedom-to-operate, it usually means that no one can hinder your product or activities with a patent. Just remember, having your own patents does not give you freedom-to-operate.

A competitive strategy for patents means your patents will cover (actually, the claims of the patent cover) what your competitor is doing or it will prevent a new competitor from entering the market. If you can patent every novel aspect of your product, then you are on your way to blocking others from competing against you in the market place. Your strategy for patents is to create a freedom-to-operate problem for others.

Approach the challenge of creating a competitive patent strategy by considering all unique and novel aspects of your product, such as its design, its use, and its manufacture. You can build this strategy based upon internal R&D, acquisition, or in-licensing, among other strategies. Accumulate patent protection on as many of the aspects of your product as possible, and you will be on your way with a solid patent strategy.

Editor’s Note: The information in this article is provided for educational and informational purposes only. This information does not provide legal or other professional advice and is not the substitute for the advice of an attorney. If you require legal advice, you should seek the services of an attorney familiar with your specific legal situation and the laws of your state.

© 2006 Gary M.Pace, PhD. All rights reserved.

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