[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?
- Are the claims clearly stated?
- Are there both apparatus and method claims?
- Can there be a single infringer of method claims?
- Are some claims drafted as broadly as can be supported by the specification?
- Are some claims very narrow, giving only a “picture” or “snapshot” of the invention?
- Is the language of the specification unusual or at odds with the language commonly used by those skilled in the relevant arts?
- Is the invention explained somewhere in the specification or drawings in a way that could easily be understood by a judge or jury?
- If the specification and claims were drafted by the inventor(s), did the inventors consult a registered patent attorney before filing the application at the Patent Office?
- Have potentially damaging statements or admissions been made to the Patent Office on the record?
- Have claims been unnecessarily or prematurely narrowed to increase the likelihood of issuance?
- Have all the inventors been disclosed to the patent office?
- Conversely, are people listed as inventors who are not?
- Did all inventors assign the invention to the patent owner?
As can be seen from the above, creating valuable patent portfolios requires a good deal of foresight, patience, perseverance, investment, and a good deal of luck. It’s great to own a patent but even better to own some of the few really valuable patents that provide a significant return to inventors and / or owners. Patent Kinetics can help your team maximize the value of your portfolio.
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