Patent Kinetics, LLC

Patents: What Entrepreneurs and Investors Need To Know Now

This is a revision of a presentation given in February, 2016 to the Boston Entrepreneurs Network. It has been updated to take into account the current kerfuffle over Inter Partes Review and the Patent Trial And Appeal Board (PTAB, "where patents go to die."). There is also an additional slide on keeping the file open with continuation applications. (Thanks to RA for pointing out the need to add a discussion of continuations.)

 

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Creating Valuable Patents - Checklists - Part 3

[Part 1 can be found here; Part 2, here]

Patents and Patent Prosecution Factors

The “optics”—the visuals—of patent portfolios are often valued more than actual patent quality. Numbers of patents, patent claims, etc. may be prioritized over patent quality. Big companies are sometimes expert at playing this game. However, those wishing to create valuable patents need to address other factors, including: 

 Prior Art Searching

• Was the patent prior art searched and if so, how extensively?
• Was the non-patent prior art searched at all and if so, how extensively?
• Did the inventor / assignee leave the searching up to the patent office?

Creating Valuable Patents - Checklists - Part 2

[Part 1 can be found here]

Technology Commercialization Factors

Closely related to market factors are aspects of the inventions themselves. Is the invention narrow or broad? Amazon’s “1-Click” patent notwithstanding, broad inventions tend to be more valuable than very narrow inventions. There are several reasons for this: in the aggregate, royalties and/or damages in infringement cases may be higher for broad compared with narrow inventions and portfolios. Broad patents may make it difficult for competitors to “patent around” the inventions or to find new ways of solving a given problem that are as effective and efficient as the patented technologies. In addition, depending on the evolution of relevant markets, more parties may infringe broad than narrow patents.

Business Implications

• Is the invention best thought of as a component of some larger product or service?
• Is the invention sufficient to be the basis of a new product or service offering?
• If component technology, who makes or would make the whole product?
• Do prospective customers have a history of incorporating technologies from other sources or are they a “not invented here” culture?
• Do prospective customers have a history of acquiring patents and if so, at what valuation? 
• Are there competing technologies that solve the immediate problem and if so, are those solutions more or less costly, or easier to manufacture?
• How long does it typically take to get a “design win” in the relevant industry?