What makes a utility patent good?
A patent can be both a sword and shield. Defensively, a patent blocks future applicants from patenting the same invention. Offensively, a patent can be enforced to pursue licensing or to stop competitors from infringing. In this post, we’ll look at what makes for a good utility patent on offense.
Which part of a utility patent defines your rights?
Suppose your utility patent has several drawings and a great deal of detailed description. Do those sections make your patent strong? How exactly do you know what is covered by your patent?
Your patent rights boil down to the claims. More specifically, we must look at each independent claim. Hopefully, you’ll have more than one. As you review each independent claim, take a competitor’s product and see if you can find each claim element in their product. You should still seek a thorough review by your patent attorney, but the point of this exercise is to help you understand the analysis that your patent lawyer undertake to determine infringement.
Can you identify any claim elements that are missing in the competing product?
What if certain elements in your independent claim are missing in competitors’ products?
Suppose you realize that Claim 1 recites a very specific structure or step (e.g., cover) that is not included in the competitor’s device. Game over? Not necessarily. Your patent attorney might still be able pursue an infringement strategy based on the doctrine of equivalents. This doctrine is a huge gray area that we won’t be able to cover in this post. However, the point is to identify certain weaknesses in your independent claims in order to gauge the strength of your utility patent.
If you see certain elements from Claim 1 omitted in the competitor’s product, move on to the next independent claim, if any, and repeat the same line-by-line comparison between the claim elements and the accused product. Perhaps your IP attorney will be able to build a winning infringement argument based on a second or third independent claim.
What if your competitors are designing new versions of products that will omit certain features?
Let’s assume your competitors are patent savvy. Even if they don’t understand patent infringement, they can hire IP lawyers to study your patent in order to design around it. What’s your next move if they do indeed design a new product in an attempt to circumvent your patent?
This is where filing a child application before your first (parent) application is granted can be critically important. If you fail to file a continuing application in time, it will be too late to do so once you see your competitors’ new versions in the marketplace. So the strategy is to file the child application so that it’s pending even before you get see the competitors’ work-arounds.
Once you see the new versions, you then amend the claims in the child application accordingly.
Do you have a good utility patent family?
By now, it will be more apparent that a family of utility patents will provide stronger rights. What might be limiting in coverage in one utility patent may be broadened or varied in another related patent.
Do you have a good utility patent attorney?
Whether on offense or defense, we’ve been playing the patent game for a couple of decades. If you need help with your utility patent application, email patent attorney Vic Lin at email@example.com anytime or call (949) 223-9623.
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