Intellectual Property Directions

The key sentence in this article is

“Medical imaging company Hologic Inc. has settled patent disputes with a subsidiary of Johnson & Johnson Co. in a deal that will see Bedford-based Hologic pay out $12.5 million for one product [and pay ongoing royalties] and get ongoing royalties coming in from another.”

That is, Hologic reached into its patent portfolio [a year and a half] after it was sued by J&J in order to find a bargaining chip. Would J&J have let Hologic keep selling the product in suit if it did not have its own product in patent problems?

Hologic settles J&J subsidiary patent dispute - Mass High Tech Business News

Posted using ShareThis

While admittedly a very special case, funded on both sides by very deep pockets, 1.7 BILLION dollars isn’t chump change to anyone. See http://www.bizjournals.com/boston/stories/2010/02/01/daily1.html.

One thing this settlement reinforces is the advice I always give clients: you only know you have a valuable patent when someone wants to copy your invention - either by licensing or infringing your patent. So the key to getting “the right patents, at the right time, for the right cost” is to ask yourself the question “If so, so what?” In other words, if you do get a patent issued on your invention (3 or 4 years from now), will anyone care?

• Will your competitors simply find another way to build a competing product, having seen your patent application 18 months from now?
• Will the cost of their R&D make your solution look attractive?
• Will they already have a competing, non-infringing product on the market by the time your patent issues?
• Will your approach represent a big cost savings?
• Will the state of the art already passed by this technology?
• Will you have the resources to defend your patent rights (or at least find an attorney to take your case on contingency)

Think carefully about these questions before investing in a patent. Remember that your patent can only stop someone from making, using, selling, etc starting on the day your patent issues. All of the sales the competition has made during your patent’s pendancy are not considered infringement.

Before committing to filing a patent application you should evaluate (with professional help) how broad your patent is likely to be, in light of the prior art and what your competitors are likely to do if they are blocked by your patent.

If I go to one more meeting where I hear a budding entrepreneur (or worse, an experienced one) talk about the protection he or she has from a provisional “patent”, I’ll scream! I wish these folks had attended Foley & Lardner’s Emerging Technologies Conference last week where there was an excellent breakout session on “Changing IP Strategies in Lean Budget Times”.

Each of the three panelists indicated that they were bring a greater portion of their patent application work in-house (specifically drafting specifications for less complicated patents) and all said they almost always start with a provisional application. But they had no delusions about what a provisional application was good for. Here are some of the points they made.

• They use provision applications to lock in priority dates for inventions for which the future value had not been established. They use the “extra” year to see how the market shapes up. If they decide the invention is best “put on ice” they just let the provisional application expire. If they want to move forward, they have the earlier priority date locked in.
• They use provisional applications to divide up an invention into parts, picking and choosing what they want to protect later. Often a new product can be patented as a system composed of several individually patentable inventions. Filing individual provisional applications allows them to consider their patenting strategy for a year, deciding how much to consolidate in a single “omnibus” patent and which elements are perhaps best held back. This strategy is particularly valuable when there are several alternative approaches for one or more of the subsystems. The cost is about the same since provisional filing fees are low and the multiple specifications are equal to the one omnibus specification.
• They don’t use the provisional application process as a way to short-change the specification. While they will use the process for “junk” applications - applications that are essentially conference slides filed to protect themselves against public disclosure at a conference - they know that to get the value of the provisional filing date the specification must have a quality specification. The claims in the ultimate regular application MUST be supported properly in the provisional application if they are going to get the early priority date. Recognizing this mandate is particularly important for international filings, where “absolute novelty” is the rule.
• They were ambivalent about including claims in the provisional application. This is a topic to discuss with your patent attorney if you are planning international filings as there seems to be some confusion regarding the impact of claims in the provisional affecting the scope of your international filings.

How about you? What changes have you implemented in your IP strategy or tactics “in lean budget times”

Is your patent attorney unintentionally planting a time-bomb in your patent application? Ever so often in the news these days we hear about the bomb squad being called in, detonating a “suspicious package”, only to declare it was just somebody’s lunch left unattended. So too the strength and validity of your patent is only tested when someone tries to blow it up in court, long after you can make any changes.

Patent attorneys are faced with several conflicting requirements when they draft your patent application. On the one hand, for example, there must be “support” for every part of every claim somewhere in the specification; on the other hand, if there is something in the specification that is not included in a claim, then that element can be deemed “dedicated to the public”.

As another example, a patent specification must teach society the details of your invention in order for you to obtain your temporary “monopoly”, but if your patent never issues, or issues with a limited set of claims, your secrets are now in the public domain.

In response to these conflicting requirements many patent attorneys have adopted certain defensive tactics. One trend I’ve noticed recently is the elimination of any meaningful discussion of how the invention at hand fits into the current state of the art. If you look at patents from a decade ago, they usually started out with introductory material that included the background for the invention (usually a discussion of the limitations of prior patented systems) and an “English-language” description of the invention. After this stage setting, the specification moved into the legalistic, patent-language description of the invention. As a substitute, and to address the “support” requirement, attorneys now essentially parrot back the claims, calling them a “Summary Description” or some such.

I think these patent attorneys are unintentionally building in time bombs.

First, if these paraphrased claims are the only support in the specification for a particular claim then I have to believe that claim will never stand up in court. “Support” for a claim has to mean something that explains or teaches the claim, something which a simple paraphrase cannot do. Attorneys who think they are providing a final defense for an unsupported claims are likely fooling themselves and you in the process.

Second, by not discussing the relative position of the new invention vis-a-vis the prior art you may have made it easier to get your patent allowed… but when push comes to shove - when the bomb squad shows up in the court room - the expensive litigation attorneys will blow your patent up in your face if you “snuck one by” the patent examiner. It’s much better to lay the prior art issues out on the table during examination than to find out years later that you’ve got a whole lot of nothing.

While it is true that an allowed patent has a presumption of validity it is also true that every patent that has been tossed out in court had that same presumed validity; if the patent is protecting a valuable invention, overturning that presumed validity will be worth a lot of legal fees to your infringer/competitor.

Always remember that your goal is (usually) NOT getting a patent. It is getting a competitive advantage in the marketplace. The expense of finding your patent in shreds in the courtroom far exceeds the cost of creating a well crafted and complete patent application.