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August 15, 2013

Three Areas of Intellectual Property You Need to Understand

By Peter Bernstein, Senior Editor

There are days when it seems like the two most dominant things in the technology industry are both abbreviated to “IP.” The first one is Internet Protocol which is the lingua franca of the digital age. It is what others have called “digital oil.” The second is Intellectual Property, and in many ways it is likely as important as the that other IP in that it is representative not just of the ingenuity of people but also its product realization and protection/enforcement impacts significantly marketplace winners and losers.



As a prelude to upcoming the Synopsis (News - Alert) under IP/Patents Telecom Sourcing Conference (SUITS) taking place August 26-29 in Las Vegas, it seemed like a good time to check in with a true expert on patent matters in general and telecom specifically, Scott Hicks, President and Patent Analyst ,Wolf Mountain IP, LLC.

While Scott has an extensive area of patent expertise, I’d like to whet your appetite for both the conference and as a reason to read his blog with answers to three questions he thinks people need to be considering as part of the process of evaluating their IP and the things they need to do to protect it.

Where should Voice, Mobile, SMS, (or any telecom type services) companies direct safeguards in order to better prepare themselves to defend their critical intellectual properties and what are those best precautions?

The place to start is in understanding various rights. It begins with the Right to Protect.

Because the patenting process is so expensive and time-consuming, it is worthwhile considering the potential value of a patented invention prior to performing a patentability analysis. Some considerations of value include:

  • How easily would infringement be detected?
  • How easily could a competitor work around the invention?
  • Would inclusion of the invention into a new version of an existing product increase sales?
  • How difficult is implementation?
  • Would the invention be better served with a different form of intellectual property protection, such as maintaining it as a trade secret?
  • Would inclusion of the invention in a product produce sufficient competitive preclusive effects so as to justify the costs of patent protection?
  • Is there an existing market for this solution?
  • What is the likelihood of further refinements?

Before filing a patent application for an invention, it is advisable to perform a patentability search. This search can help determine if one should proceed with filing, and if so, what the scope of the invention's patent application should and can be.

Though this is an extra upfront cost, it is well worth the investment because it can prevent spending tens of thousands of dollars and dozens of hours on an invention that is not patentable. Additionally, a patent search helps scope the claims of a patent application to the desired and advisable breadth. It also gives a higher level of confidence in the patent application itself as an investment.

A patentability search, normally performed after determining that an invention covers patentable subject matter and has utility, and that its potential return on investment warrants patent pursuance, focuses on finding prior art references that may be relevant to the invention’s novelty and non-obviousness. These prior art references comprise a wide array of materials, such as issued patents, published patent applications, journals and other non-patent literature, etc., and can have been made public at any point prior to the invention’s creation.

What’s next? Step one was about determining patentability. What about the preparations for making sure that assuming there is product realization that you are not going to have problems?

 Great question about a key step in getting ready that falls under the category Right to Use.

This is also referred to as a “freedom to operate” (FTO) search. In short, a “right to use” search, or an “infringement” search, a clearance search concentrates on uncovering enforceable patents that might act as “roadblocks” to commercialization of a product or service.

A clearance search can also be used to uncover pending patent applications that, if eventually issued as patents, might be infringed by a given product or solution. 

Voice, Mobile, SMS, and any telecom-type services are all litigious technology areas, so performance of clearance searches well prior to new product and/or feature introduction is often advisable.

Any discover potentially problematic patent documents can be addressed in a number of ways, including the following: 

  • Performing a workaround so as to avoid possible infringement, if such a workaround is feasible. Any workaround considered should be analyzed to ascertain its impact on the product — its impact on cost, quality, and timeliness of the product should not be more detrimental than other possible routes, such as obtaining a license. Also, it is often advisable to obtain a written opinion from external patent counsel on the non-infringement of the workaround on the patent.
  • Forgoing the product altogether.
  • Licensing the patented invention from the patent owner, whether through monetary payment, cross-licensing of patents, etc.
  • Obtaining an opinion from external patent counsel of prior art anticipation or obviousness of the patent. This type of opinion is more difficult to obtain, as in this case every claim needs to be shown to be invalid. Additionally, this type of opinion is certainly not rock solid, as the patentee can render the opinion moot such as through claim modification in a reexamination (e.g., adding an element to claims to avoid invalidity finding by examiner).
  • Obtaining an opinion from external patent counsel of non-infringement. This type of opinion only has to show non-infringement of the independent claims, as a product that does not infringe independent claims cannot infringe the dependent claims.
  • Taking a chance and doing nothing. The risks here are obvious, as there could be problems with “willful infringement”. Consider also that a given patent may not be in force due to a missed maintenance fee, but one needs to be careful here since patents can be revived.

What is the biggest misconception in terms of how companies can understand, enforce and protect their patents and intellectual properties?

 The largest misconception in terms of how companies can understand, enforce, and protect their intellectual property is one held by a large portion of companies’ R&D engineering communities – that is, that an inventor’s novel and non-obvious invention is obvious and one that would have been formulated by any other engineer in a similar situation.

This misconception leads to many inventions never being considered for patent protection. The issue can at least partially be overcome by continual inventor training to educate engineers to recognize the features of designed products and services that indicate the desirability of protecting aspects of these designed products and services with patents.

 This training should include information about patents, their history and intent, patentability rules, and examples of patented solutions within the given company’s technology areas. In particular, patent examples often inspire an “aha moment” within engineers that lead them to become prolific inventors and patent protectors. 

SUITS will be a place to learn more about rights and best-practices. However, as can be seen from the above, this is literally a case where preparation is crucial and prior knowledge about not just what is patentable, but also what else is out there or could be a problem going forward -  is invaluable. That is something that it is too bad the casino in Las Vegas won’t take odds on - particularly since it seems clear that being prepared can win you a lot of money as well as mitigate the risks of losing a lot.




Edited by Stefania Viscusi
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