Patent Law Insights : Software Patent Lawyer & Attorney : Perkins Coie Law Firm : Intellectual Property & Technology Law

There are several ways to increase the value of a patent portfolio.  One is to ensure that patented claims cover  the evolutionary path of the relevant technology.  A second is to be sure to file patent applications (after receiving foreign filing licenses) in jurisdictions where the technology could have competitors or markets.

One market that is seen as being increasingly important is India.  A billion people live there and an increasing number of them are entering the middle class.  The inevitable off-shoring trend, though painful to many in the U.S. and Europe, has been a boon to people there.  They are demanding products and services they could not previously afford and, because of the popularity of American media, their demand for foreign brands is seemingly insatiable.

Although foreign companies have seen India as a source of cheap labor and a potential future market for several years, they have limited their direct investments because of India's rules that restricted royalty payments without prior government approval and lax enforcement of intellectual property rights.  The government of India on Wednesday announced a liberalization of the royalty payment rules. 

With this announcement along with improved enforceability of intellectual property, India is setting itself up for a bright future on the world stage.

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Patent attorneys often attempt to get the broadest possible coverage for a client's invention because that can usually make the patent quite lucrative.  Patenting broad claims can be expensive during the patent procurement process because patent examiners are reluctant to let broad claims issue and so there may be multiple back-and-forth communications between the patent examiners and patent attorneys.  However, patents with overbroad claims can be expensive to keep enforceable, e.g., when a third party requests the U.S. Patent & Trademark Office (USPTO) to reexamine an issued patent in view of prior art. 

For example, the Electronic Frontier Foundation (EFF) has apparently requested the USPTO to reexamine U.S. Patent No. 7,568,213.  According to the EFF, this patent is purportedly directed to "podcasting."  When a patent is under reexamination, the patent holder must expend resources (e.g., patent attorney fees) to work with the USPTO to define the appropriate scope of the patent's claims in view of the newly identified asserted prior art.

During prosecution, patent attorneys, inventors, and anyone involved in a patent application have a duty to cite all pertinent prior art they are aware of.  However, it is nearly impossible in most fields of human endeavor for the patent attorney, patent examiner, or even the inventor to be aware of all pertinent prior art.  Thus, it is quite easy for overbroad patent claims to issue.  Sometimes, the best prior art is not even found until the patent is asserted in an infringement lawsuit because the alleged infringer is motivated to prove that it is not infringing a valid patent. 

Thus, smart patent attorneys attempt to patent claims of varying scope -- from broadly encompassing the subject matter of the invention without crossing into the known prior art down to narrowly encompassing a specific implementation that is reflective of the client's commercializable product.

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Some patent owners struggle in their decision of what to do with their patent.  If the patent owner is not already a company that practices the invention, the patent owner may be able to generate value by licensing the patent for future use, asserting the patent to retrieve damages for past use, or creating a company or product based on the patent.

SawStop took the last approach.  According to its web site, the company owns dozens of patents on its innovative technology for stopping table saw blades upon contact with flesh.  It has patents in the U.S., China, and India.

I have to admire an inventor who puts his own wellbeing at risk to demonstrate his invention.  See this YouTube video of a Discovery Channel segment on his invention:

http://www.youtube.com/watch?v=E3mzhvMgrLE&feature=player_embedded

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I just finished reading Burning the Ships: Intellectual Property and the Transformation of Microsoft by Marshall Phelps, which is a fascinating account of the transformation of Microsoft's patent power during Marshall Phelp's tenure there.  Under his leadership, Microsoft has become a significant holder of patents covering many important aspects of Microsoft's technology.  The book is well worth the read for anyone who wants to understand Microsoft's patent strategy.

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