Patent Strength Analysis
Patent strength refers to the ability of the patent to withstand legal scrutiny and possibly court disputes, while still giving the inventor ownership rights as broad as possible. To assess the robustness of the intellectual property, an attorney runs a patent strength analysis and reviews other inventions. The work consists of assessing how to expand the patent claims so that they border competitive patents without crossing over and overlapping.
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Background
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The United States Patent and Trademark Office (USPTO) grants patents that allow an inventor to block someone else from manufacturing, selling or importing into the United States any product that uses the intellectual property from the patent. It does not prevent someone else from manufacturing or selling overseas, unless foreign patent coverage was requested and issued.
Context
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In a 2001 study of patent litigation sponsored by the National Academy of Sciences in Washington, Jean O. Lanjouw and Mark Schankerman showed a direct correlation between companies' financial success and the patent strengths of their intellectual property portfolio. Patents represent corporate assets and can be sold, licensed or traded in the same way that other corporate assets are. Hence, patents and their content deserve to be planned strategically.
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Issue
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Court disputes about patent rights affect the company's profitability and long-term revenues. The Lanjouw and Schankerman analysis indicates that lawsuits over patent rights represent about 19 patents out of 1,000, and 95 percent of the suits settle before a court injunction (most frequently prior to trial hearings). Hence, a patent must be designed to demonstrate to competitors that great care was placed in avoiding stepping on their space. These arguments tend to appease the debates.
Strength
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The strength of a patent stems from the power of the claims listed in the document. Strong claims not only describe a novel concept, but explain the advantages that the new design brings to the current ways of doing things. The claims expand to include all of the applications where the novelty may be used. Some claims may be added to try to seize some of the unclaimed intellectual property. This last step makes them tightly wrap around the intellectual property owned by competitors, as explained by J. Michael Buchanan, Associate at Cantor Colburn LLP and author of "Stanford Law Review" papers.
Method
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To strengthen a patent, an attorney constructs claims that thoroughly describe the uniqueness of the idea, following the recommendations from the USPTO. A prior art analysis reviews anything that has been published in the past, as well as past issued patents. From mapping the findings around the concept from the inventor, the attorney can identify the open and unclaimed space. From there the attorney includes potential future uses and variations on the features that may expand its functionality.
Caution
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The names of the inventors must represent an accurate list. The USPTO uses a unique perspective on the definition of an inventor, who must be someone who participated in creating the idea, not just the reduction to practice. In Europe, inventors may involve individuals who participated in the validation of the concept. In the United States, a disconnect in the names represents grounds for patent invalidation.
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References
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