I recently came across an article in Forbes titled “Today, The Best Patents Have Little To Do With Protection.” Provocative title. An even more provocative argument.
Written by Stephen Key (more on him in a moment), the article centers around the question: “Has stopping someone from ‘stealing’ an invention ever been as simple as filing a patent application and being issued a patent?” Key’s argument, simply put, is that no, protecting intellectual property these days calls for more than just a patent. In his words: “Patents are simply words that are going to be interpreted differently by different people at different times — including judges, juries, patent examiners, and even your competitors.”
But is that true? Is the modern patent system built around the potential for invalidation and challenges down the road? True, there are today more avenues open for competitors and others to challenge IP rights, but that doesn’t mean the system itself has moved on from protection. It’s just that the way that type of protection functions depends on where you are in your company’s lifecycle and what your intellectual property protection needs actually are.
First of all, I need to mention that the article itself should be taken with a BIG grain of salt. Keys is the founder of InventRight, which is a consultancy that charges inventors money to supposedly help with the commercialization of their inventions. It’s intended for early innovators new to the patenting process.
And that’s the perspective he brings to his argument. The suggestions he offers for entrepreneurs looking to file “better” patent applications are heavily angled toward those with little or no experience with the IP protection process.
For example, he highlights the importance of familiarizing yourself with prior art “to further hone in on your invention’s point of difference.” In his view, founders should personally find, examine, and “take the time to understand” what’s claimed in related patents, because overlooking this prior art can come back to haunt you if it’s skipped early in the process. Take the time, dig into the details and get to know the full market completely.
That makes sense for brand new ventures, but my recommendation for more established companies is to assume that the innovators at the company are the industry experts in their field. They should already be aware of the general state of the art in your niche without having to do deep searching. In fact, several large tech companies forbid their technical staff from reading other people’s patents entirely.
Why? It’s the Duty of Disclosure rule from the USPTO, which requires anyone involved with a patent application (including inventors, company employees, patent attorneys, etc.) to submit to the USPTO any reference that may be relevant to a particular patent application. Just becoming aware of information that’s potentially related to your patent application can kick off this process.
Simply put, most established companies are already doing the right things regarding prior art references, simply by staying on top of industry knowledge and customer needs. There is rarely a need to take it much further than that.
And that’s why context matters when considering IP-related advice. Consider the source.