August 13, 2009

Litigation Avoidance Strategy No. 1: Better Patent Claims = Less Litigation

By Matthew L. Cutler, Principal

It is often a miscalculation to assume that a company’s patent attorneys can, on their own, develop patent specifications and claims that will withstand the rigors of litigation and/or prevent a competitor from getting into its business space.  Too often, patent attorneys cannot understand your business nearly as well as your inventors and/or business people.  As a result, the patent claims that they draft are either too narrow (i.e., they include unnecessary features/limitations) or are not sufficiently directed to the actual invention (i.e., the focus of the patent claims is wrong).  In most instances, your patent attorney is working off limited information, such as a brief “invention disclosure” submission from the inventor and interviews with the inventor, that typically does not result in the transmission of all relevant background and detail required for the best possible claims.  Then, when a busy inventor reviews the claims that are, in a worst case, simply directed to a preferred embodiment, he or she says “yep, that’s what I invented,” and spends no further time on the issue.

A team approach is, therefore, required to generate the most valuable patent claims.  Inventors need to be intimately involved in claim drafting, along with the patent attorney, and they must possess a broader perspective concerning what you hope to achieve by pursuing and acquiring patents.  For example, the inventors should look at draft patent claims from the perspective of your competition.  As they review the patent claims, they should be asking themselves “how would our competitors – Companies X, Y and Z – make a competitive product or otherwise practice my invention without coming within what is defined by this patent claim?”  In other words, how would our competitors “design around” this patent claim?  Is there a feature of the invention listed in the claim that is really unnecessary to practice the invention or is it possible that certain required features are defined too specifically?  These are the types of questions inventors should be asking themselves as they “evaluate” patent claims.  One technique in this regard is to have the inventor look at each word in a particular patent claim and decide whether every such word is necessary to claim the invention and/or define the invention over the prior art.  Broader claims that avoid the prior art will force your competitors to avoid the patented technology.

To the extent a patent claim is poorly drafted, competition can flourish and litigation can ensue.  An example of an opportunity for broadening out a claim, while still avoiding the prior art, includes the case of a claim directed to a quick connect/disconnect connector.  While the preferred embodiment may include a standard, off-the-shelf, BNC-type connector (a “bayonet-type” fitting that requires only a quarter turn to engage and disengage), there may be no need to use the term “BNC” in the claim.  Compare, for example:

Narrowly-Worded

the post being positioned to engage with a slot of a BNC connector to hold the BNC connector on the sleeve external surface

Broadly-Worded

the post being positioned to engage with a slot of a BNC connector to hold the BNC connector on the sleeve external surface

A competitor could “design around” the invention defined by the narrower of these claims (i.e., by using a non-BNC connector).  The patent owner would, of course, argue that even a non-BNC connector would still result in infringement of the claim under the Doctrine of Equivalents, but that would involve a fact-based analysis and perhaps hundreds of thousands of dollars in litigation expenses before a fact finder decides whether infringement has occurred or not.

In short, it is of paramount importance to emphasize to your scientists, engineers, and technical personnel to be intimately involved in the claim drafting process (your attorney can make sure the specification meets the statutory requirements in view of the claims).  By keeping in mind two simple questions – “how would I design around the claim?” and “what words in the claim can I delete?” – your inventors can strengthen your valuable patents and, ultimately, save your company significant money by avoiding costly litigation and/or warding off competition.