Patent Strategies Applied by Companies
of its overall strategy because it has an effect on its marketing and economic security policies.
The main purpose of a patent strategy is to conquer a market by using the company’s exclusive
rights for inventions.
A dominant patent strategy means preparing an umbrella application for an invention containing a minimum number of distinctions in the independent claim and a maximum number of dependent claims with approximately the same number of alternative and exclusive distinctions (see below). It is reasonable to use a blocking patent as a dominant patent (see below). Using a dominant patent in licensing agreements helps to make profits and to control a particular sector of a market.
In a shielding strategy, in addition to the basic dominant patent, the patentee creates a number of additional patents “around” the main technical solution. It helps to fight competitors and patent trolls. With a big number of related patents, they become deprived of maneuvering capacity in “patent wars”. Although additional patents are often not used for their intended purpose, with the introduction of individual distinctions into the basic solution, it may be effectively upgraded without subsequent patenting. This strategy has become increasingly important in recent years.
A licensing strategy focuses on making profit from the sale of licenses. It is often used by small companies with high intellectual capacity, but insufficient resources to implement their inventions.
Examples of using patent strategies
The transnational company IBM uses a very interesting patent strategy. It is based on patenting everything that is invented, and this has applied to business methods for a long time, too. As a result, IBM has been a leader in the number of patents and patent applications for many years. However, patent strategies tend to change in accordance with new demands, and IBM’s strategy was no exception. The main novelties may be described as follows:
authors of patent applications are responsible for their quality;
patent applications must be made available for public comment;
effects of holding a patent must be clear and transparent;
methods related only to business processes without any technical value cannot be patented.
As a second example, we will briefly describe the patent strategy of the Russian radio engineering corporation Vega, adopted until 2017. This strategy is the basis for innovation, marketing and economic security policies of the Company. Its basic principles are:
centralization of management;
coherence of innovational and technological policies;
coordination of all participants of innovation process.
In addition to the above-mentioned four basic patent strategies, there are varieties and extensions associated with specialized patents. Let us describe such patents more in detail.
All patents may be divided into common and specialized patents. Common patents are made using “common patent techniques”, while specialized patents are made using so-called “high patent techniques”. To quote : “The concept of “a common patent technique” is comparable to the process of a common photographer, who uses a camera and performs several operations to produce a photo of an object. The term “high patent technique” may be compared to the work of an artist, who produces the same image, but also makes some creative contribution to this image, depending on his skills, experience, intelligence, and talent”.
Specialized patents may be divided into protective and tactical. Although some types of specialized patents were already reviewed in [1,2,3], it would be appropriate to analyze them in the context of a company’s patent strategy.
Protective patents are umbrella, Singer and pioneering patents. They may differ in the text, but they all serve to protect technical solutions from copying and to protect patentees from attempts to ban their manufacture and sale of their products.
The claims of umbrella patents are wide enough to cover (like a covering umbrella) whole spheres of the technical art. Special distinctions of the independent claim are written in a highly generalized form. An example in nanotechnology would be IBM’s patent for an atomic force microscope (US5144833, Atomic Force Microscopy, 27/09/1990), in which the independent claim very generally describes the scan of an item’s surface using a flexible prober and a laser beam that controls its movement, and the dependent claims describe various options for this scan. As a result, IBM concluded a large number of licensing agreements with developers of scanning probe microscopes.
When drawing up claims of umbrella patents, it should be borne in mind that its main feature is the minimum number of distinctions in the independent claim, and the maximum number of dependent claims with dependent distinctions. However, it is sometimes difficult to have such patents through. The examiner of the patent application will want to eliminate the distinctions of the independent claim in the first place. If the examiner does so, then the dependent distinctions will go into the independent claim. In this case, it is very important for the distinctions not to make up alternatives for each other, because, otherwise, after some dependent distinctions are put into the independent claim, all other dependent distinctions will be rejected and the claim will automatically cease being an umbrella claim. It is advisable to create a maximum number of dependent distinctions that have a common solution in relation to the largest possible number of other dependent distinctions. Then, when introduced into the independent claim, the preserved common distinction from the dependent claim automatically retains all its dependent distinctions. It is particularly important if a patent umbrella is planned for a dominant patent strategy.
Singer patents contain a minimum number of distinctions obligatorily used in all solutions for similar products. A Singer patent may be described as follows: “A needle comprising a pointed body with a hole for a thread is characterized in that the hole for the thread is located in the front pointed part of the needle”. It is presumed that such patents are difficult to circumvent, but there are techniques to do it , so, regardless of the strategy, it is recommended to convert Singer patents into umbrella patents.
Pioneering patents are obtained for pioneering inventions, opening new areas in the art. Examples of such inventions are steam engines, incandescent bulbs, plastic, radio, television, radars, laser, scanning probe microscopes. Of course, people must seek to create and patent such inventions, but they need to be realistic about their capabilities.
Tactical patents are blocking, unblocking, misleading or misinforming, nuisance, camouflage, provoking, promotional, adjustment, tender and report patents, intended primarily for the tasks referred to their name.
Blocking patents minimize the possibility for competitors to enter market sectors where the patent holder’s products are sold. Blocking patents include patents designed to protect areas, which (for whatever reasons) the patentee is not developing or producing. The reason for making such patents may be the fact that, when developing a new area, it is not always possible to develop all devices and technologies covered by the patent at once. If all areas are pre-blocked, it is possible to evade a subsequent competitive patent war.
In addition, blocking patents may have a promotional value, because, in the search for an investor at early stages of a project, it is important to show the investor that the area of investment will have a proper patent protection. In some cases, when applying for this kind of blocking patents, an in-depth technical study may be impossible due to time constraints. Thus, it is advisable to postpone the examination of the major aspects of the patent, so the application could be supplemented with additional materials within three years after filing, when new technical solutions are discovered.
On the one hand, blocking patents must prevent competitors from patenting entire areas; on the other hand, they must not contain too many dependent claims. It is done this way to avoid hindering the protection of future specific solutions that have not been covered in detail at the initial stage of the project. Thus, blocking patents may be used in all these strategies.
Unblocking patents are utilized to invalidate not only blocking patents, but also common patents of competitors by formulating and resolving new problems in conventional areas. Unblocking patents are created and used, above of all, for accessing new markets, which is mainly done by new companies. Of course, it is necessary to fill an unblocking patent with as many functions as possible, but it is not always possible, because such patents are considered the most difficult of all patents. Since entering and securing a niche in a new market typically takes several years, unblocking patents may be developed by expanding the “umbrella” feature of later patents. Options for unblocking patents are described in .
Misleading or misinforming patents contain deliberately distorted data and incorrect technological and design solutions. The objective is to mislead competitors and to send them on a wrong track, or mislead patent examiners in order to prevent the granting of patents to a rival company that may have a correct solution to a similar task. These patents are used within the protective strategy.
Nuisance patent holders do not produce, and often are not going to produce patented products. The purpose of these patents is to prevent the issuance of similar patents to competitors and to hinder their development. These patents may be used by large companies suppressing smaller competitors. On the other hand, smaller companies, which do not have production capacity, in pursuance of a dominant patent strategy, can create a nuisance patent that eventually becomes a dominant patent. In this case, it is advisable to make an umbrella patent. Nuisance patents have a similar purpose as blocking patents, but since their tactical value is low - their content may also be of a lower level.
Camouflage patents are intended to disguise the true intentions of the patent holder, for example, when entering new markets. Such patents are suitable only if the share of the company’s products in the market is low, and the company does not want to publicize its intentions. With a small market share, the company may remain in the shade, but having a common patent may immediately attract the attention of competitors, who may try to challenge the patent, for example. A camouflage patent protects products and helps the manufacturer to stay unnoticed. Such patents are made for structurally similar equipment, but belonging to a different art. For example, in addition to measuring, the probe of a scanning probe microscope may also modify the item’s surface. This will require a rough movement along an axis and a very precise movement in three inter-perpendicular axes, like in a jig boring machines, which first moves the cutter toward the item along one axis and then moves it very precisely along three axes when processing the item. If we combine the probe and the cutter into one general term, for example, “an item processing module” and describe extended processing ranges, then the patent issued for a general processing device may completely disguise a scanning probe microscope. The technique for creation of such patents is described in detail in [4,5].
Provocative patents have no real technical value, but may serve as grounds for initiation of a lawsuit conflict with a rival or for threatening the rival with a legal process that may lead to a loss of credibility of the company against whom the lawsuit is filed. This strategy will not be reviewed here because the solutions for its implementation often turn to illegal practices.
The major purpose of promotional patents is to advertise products. Therefore, such patents are not about the quality and scope of protection, but the advertising properties of titles, abstracts, formulas and descriptions. For example, it may be advisable to supplement promotional patents with names, which promote medicines, cosmetics, building materials, with the term “nanotechnologies”. In this case, the promotional term in the title and in the independent claim may narrow the “umbrella” in common patents. A promotional patent must declare a solution for vitally important tasks within a specific area, which must be highlighted in the text of the application.
Three types of tactical patents have appeared recently, which may be called “adjustment”, “tender” and “report” patents. Adjustment patents are used for adjusting a basic technical solution for the needs of a particular customer; tender patents are used for successful participation in tenders; and report patents are used for records, for example, for budgetary funding.
Frequently, a situation occurs where the sale of equipment requires some adjustment for specific needs of the buyer. Of course, it is possible to make a primary umbrella patent for the equipment, which will include all necessary improvements that the buyer may need in the product through dependent distinctions, but, in practice, these improvements are usually beyond the primary patent. In this case, it is advisable to use the basic invention as a prototype and to file another application after its improvement. Often, this work is not difficult because most of the work has already been done when patenting the primary invention. Moreover, with the use of all the distinctions of independent claims, the owner of the patent will retain the right to receive part of the profits from the sale of products manufactured in accordance with the new patent. This is important if the new solution is to have further patentees and authors.
Tender patents are of two kinds. The first kind is required, for example, before participation in public tenders for development of equipment or technology, the second kind is required for sale of components included in larger solutions. In the second case, the main developer factually arranges a mini-tender among suppliers of components, who must not to violate the patent rights of third parties. Patents of both the groups must have a high-quality protection and be properly designed. Firstly, the abstract must not just mechanically list the claims. It must describe, in the simplest terms, the goal, the objective and the main means of achieving the objectives, without necessarily including all the dependent distinctions. Secondly, the claims, preferably, multi-chained, should contain a small number of distinctions in the independent claim. When the number of these distinctions is more than three, the competitors will try to exclude some of them to be exempted from the scope of the patent, and a competent customer of the equipment and technology may note that specifically. Although, in some cases, the first claim must include a much larger number of distinctions, for example, when patenting purely design solutions. Thirdly, drawings (particularly, for design solutions) must be simple and clear, without redundant and unmarked elements. Fourthly, the description must be written in a clear language and have a classic form, which will highlight the developer’s skills.
One of the requirements for inventions, funded from the budget, may be that the date of filing the application for reported inventions should be later than the funding of the work begins. In this case, obtaining patents is not always mandatory. Indeed, no one can oblige people to get a patent, because invention is a process of creation, which is hard to regulate, and patenting is an adversarial process. However, patenting measures may be required under the terms of a contract. In this case, applications must have names, which are as close to the name of the contract as possible, because it will facilitate the monitoring and audit of the project. Often, an application for a report patent must be submitted regardless of the actual state of affairs on a specific invention. In this case, it is necessary to ensure the possibility of filing subsequent applications, when the invention is finalized, i.e. when the primary report patent becomes a prototype of the final patent. Then, firstly, it will simplify the preparation of the final patent, and secondly, it will reduce the likelihood of counteractions by the prototype patent holder, if all the distinctions of its independent claim have to be used.
In practice, people often use compound patents. Let us again look at the Singer patent, as an example. The umbrella extension of Singer needle embodiments could be done by describing different forms of the hole: rectangular, oval, round, etc., as well as various shapes of the needle section: rectangular, oval and round. This patent may also become promotional by focusing on consumer qualities of the product in the abstract. This patent may also be a tender patent if the description is made very carefully. Whilst a needle is not a high technology, the Singer patent is a typical example of using high patent technique.
An umbrella and, simultaneously, camouflage patent for a high-technology invention may well be used for solution of specific tactical tasks. This patent may also be an unblocking and tender patent. Furthermore, any type of patents may have a misleading component, which is often needed to conceal the knowhow. For example, the patentee may provide very wide ranges in specifications (temperature, pressure, speed, strength, power etc.), within which it may not be so easy to find the right value. Alternatively, a key element of the invention may be described in general terms, without disclosing its important details. To ensure the compliance with the criterion of “industrial applicability”, it is helpful to provide references to well-known, but non-optimal solutions (distinctions). However, it must be borne in mind that the technical result of applying the well-known distinction must be different from the technical result of applying the common distinction, which is under examination, for it not to be excluded from the claim. At the same time, it is reasonable to provide some inaccurate, but not contradictory to the laws of physics, details of the common distinction. More details on concealing a knowhow is described in .
As has been noted in the patent literature, “there are no limits or unsurmountable peaks in the inventive and constructive work of patent professionals and innovators” . Therefore, some specialized patents become common patents with the advancement of professionals. For example, a vast majority of recent US and European patents have umbrella-type claims. Russian patents are increasingly becoming umbrella-type patents, too.
Implementation of Patent Strategy
The main objective of a patent strategy is to bring an innovative and competitive product to a market by using high-priority research results and by legally protecting them with patents.
A patent strategy is implemented by the following means:
conducting operational patent investigation in the art at early stages of the work;
study of global development trends for the invented object;
assessment of patentability of the intellectual results;
identification of patentable technical solutions in innovations of the company;
in-depth patent investigation for primary patent claims;
assessment of patentability of newly created technical solutions;
identification of analogs and prototypes for newly created technical solutions;
preparation of patent applications for inventions, models and technological samples;
selection of objects (a method, a device etc.) for patenting;
selection of a country (a community) for patenting;
determination of the optimal timing (given the development stage) for patenting;
determination of owners and authors of patents;
submission of patent applications for inventions, models and technological samples;
participation in the examination of patent applications for inventions, models and technological samples.
Special attention should be paid to the possibility of creating a cloud of patents (which may be part of the overall strategy) around some basic technical solution. A cloud of patents typically has the following elements:
a basic umbrella patent for a device, a method or a material;
patents for particular solutions disturbing the integrity of the basic invention;
patents for implemented methods undisclosed in the basic technical solution;
misleading patents for methods, which may be realized in the framework of a basic patent for a device, but which is not useful in reality and cannot be used to solve tasks;
misleading patents for particular solutions of the basic patent, which are actually not used to achieve the goal.
We must also say a few words about training systems for inventors and patent professionals working with the company’s patent strategy. As previous articles of this esteemed editorial have noted, invention and patenting are often separate processes in our country. Of course, it may also be an element of strategy. However, in practice, it is sometimes very useful for the inventors to conduct a patent investigation and to have application writing skills. Patent professionals may find knowledge of modern invention methods very handy, too.
Typically, when an inventor conducts a patent investigation, about 25% of found patents are related directly to the invention, 25% pertain to adjacent areas of technology, but contain interesting technical solutions, which may be introduced directly or with some modifications into the invention, and the remaining 50 % may be used for parallel or subsequent inventions. Patent professionals will only find the first 25% of patents at best, of course.
A further aspect is related to the finalization of inventions. Currently, there is a practice of submitting applications before the completion of the invention, and many companies even build their patent strategy on that. This is reasonable because if you wait for the completion of the project (which may take a few years), spend all the money and start patenting only after the creation of the product or technology, then the patents for these products may already have been obtained by competitors. Besides, things may even more unpleasant because patents for similar technologies and equipment may be obtained by patent trolls whose only goal is to get profits at the expense of the manufacturer. Patent trolls may trace the trends in promising areas and apply for an anticipatory patent with the right of prior use.
However, when solutions are patented before implementing a project, patents are often too “raw” and do not provide sufficient protection for final versions. It is also easier for examiners to reject such patents. Here comes in the developer’s ability to write the text of applications. When preparing a text for, say, insufficiently covering umbrella claims, the very structure of the text helps to add distinctions into the patent claim. For example, a developer decides to control the movement of the coordinate platform using an interferometric sensor, and, in nine cases out of ten, only when he sits down to write the text, he will understand that he may also use, for example, capacitive and inductive sensors. When listing each distinction in the text, it is very important to ask the question: “And what else can be added to this distinction?” Therefore, it is necessary to teach developers how to draft applications. Of course, the theory of solving invention problems by G. S. Altschuller may help and, but under the stress of modern manufacture, mastering this theory is quite problematic.
On the other hand, very few universities teach invention techniques, and patent professionals often face the problem that the company needs to obtain a patent, but there are no patentable technical solutions available. Here, the patent professionals’ knowledge in the field of invention can help when they explain techniques to novice inventors.
Thus, each patent strategy should include ongoing training of inventors and patent professionals in the fields of each other’s competence. Invention and patenting training methods are described in [7,8,9].
The outlined options for patent strategies of companies contribute to patent protection of domestic inventions and improvement of their competitiveness in domestic and foreign markets. ■