April 25, 2022
By Robert Cantrell - Registered Patent Agent
Three ghosts visited me from the USPTO while I was inventing for the Walmart drone program. The first was the ghost of patent claims past who asked me to consider the claims we might have had if we had filed for them sooner. The second was the ghost of patent claims present who had me consider our inventions right now. The third was the ghost of patent claims future through which I saw how the drone program could look and the patent claims that would ensure the better future.
The ghosts correspond to the three main ways to capture and claim patent-eligible inventions:
Harvesting inventions from past solutions and filing ahead of competitors and before statutory bars,
Documenting and filing on present inventions as they evolve, and
Forward ideating to plant patent flags along the likely roads to the future.
Each way has its place to create a balanced patent portfolio by which to secure freedom to operate for the long term. Devoting time and wealth to amass patents is unlikely to further a venture—and the happiness a successful venture might bring—without listening to all three ghosts.
By Jose W. Jimenez, Esq – Former Chief Patent Counsel & Registered Patent Attorney
From an in-house perspective, or for someone providing advice to in-house counsel, what Robert suggests absolutely make sense and any good patent counsel would certainly agree. But just like exercising more, eating healthier meals, or living a more balanced lifestyle is something we know we should be doing, most of us in-house counsels are fighting the clock every day and our Outlook meeting calendars just keep up! Sounds more like a new year’s resolution and not a plan that an in-house counsel has time to even implement.
Well, Rome was not built in a day, and neither is a good patent program and portfolio, so it is time to get started. Let’s first break these efforts down in smaller chucks and target quarterly or semi-annual reviews of your past filings and future innovation pathways with engineering and marketing. Sometimes simply asking these questions on a semi-regular basis gets the team thinking about it and at least and you avoid looking back at “missed opportunities.” Once this high-level discussion becomes part of the fabric of your patent program, now you need to break it down further by technology, technology trends or by business unit.
The last step in process is to set actual number goals and allocate dollar resources to this effort to ensure something gets filed. Not sure if the project is worth it or if the inventive concept will pan out in the market? File a provisional application anyway, its cheap insurance. One of my past clients scrapped an entire product program and refused to expend funds on just filing a patent application to at least protect part of what they had invested in product development. A few years later, our competitor started to market the exact same product! We just watched as they took market share on a product we had invented first.
Lesson learned: simply giving all of the above efforts lip service will come back to “haunt” you as you will realize that you did indeed discover some great opportunities along the way but failed to put real patent dollars and effort behind them. So put down those French fries and Pepsi® and let’s get started. Give us a call, we can help coach you through this.
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