Thorough prior art searches and effective drafting are crucial in ensuring the enforceability and value of patents.
Aligning the incentives of patent attorneys and clients is important for creating meaningful patents.
Comprehensive prior art searches early in the process can save clients substantial fees and enhance the quality of their patents.
Deep dives
The Evolving Market for Patent Buying and Selling
In this podcast episode, the guest host, Louis Carbono, founder and CEO of tangible IP, discusses the war games-filled world of patent buying and selling. He provides historical perspective and an overview of the current state of the market. The demand for patents has decreased in recent years due to changes in case law, such as Alice and the American Inventors Act (AIA). There is now a mismatch between sellers wanting to sell their patents and buyers' preferences. Large corporations are hesitant to acquire patents without assurance of their validity, leading to a decrease in transactions. Non-practicing entities have become more active in the market, seeking to monetize patents through litigation. The podcast highlights the importance of thorough prior art searches and effective drafting to ensure the enforceability and value of patents.
Challenges in Enforcing Patents
The podcast emphasizes the difficulties faced by patent owners in enforcing their patents. The changing landscape of case law, including 101 and divided infringement issues, has made it harder to prove the validity and enforceability of patents. The lack of support in patent specifications, indefiniteness, and cascading CIPs (Continuation-in-Part) further complicate the enforcement process. Drafting claims that avoid divided infringement, provide sufficient support, and minimize the use of CIPs is crucial in creating enforceable patents. The episode discusses the importance of aligning the incentives of patent attorneys and clients to ensure the creation of meaningful patents.
The Role of Prior Art Searches in Patent Drafting
The podcast emphasizes the significance of comprehensive prior art searches in patent drafting. Conducting thorough searches helps identify existing inventions, assess patentability, and avoid the issuance of invalid patents. Notably, the podcast highlights the benefits of providing a complete invention disclosure to patent attorneys, allowing for more efficient prosecution and increased chances of obtaining robust patents. The episode suggests that investing in thorough prior art searches early in the process can save clients substantial fees and enhance the quality of their patents.
Importance of Portfolio Size and Open Continuations
When evaluating patent portfolios, it is crucial to consider the size and composition of the portfolio. Single-patent portfolios are difficult to monetize, especially without open continuations. Continuations offer the opportunity to modify claims in response to changing case law or to incorporate new prior art. Without them, future enforcement efforts may fall short. Additionally, having foreign corresponding patents can be strategic for global enforcement and licensing efforts in jurisdictions like Germany and China. These countries provide a stronger leverage for negotiations due to the possibility of obtaining injunctions.
The Importance of Strategic Claim Drafting and Prior Art Searches
Strategic claim drafting is essential to ensure the enforceability and relevance of patents. Rather than focusing solely on covering the immediate invention, patent attorneys should think about potential design-around scenarios and draft claims accordingly. By anticipating how competitors may attempt to work around the patent, attorneys can draft claims that protect against such efforts. Additionally, conducting thorough prior art searches is crucial to identify and address potential novelty and obviousness issues during prosecution. Neglecting this step may result in the grant of a patent with weak claims, which can be easily invalidated during later enforcement actions.
In this episode, we take a deep dive into the war games filled world of patent buying and selling. We are joined today by special guest host, Louis Carbonneau, Founder & CEO of Tangible IP. Mr. Carbonneau is a recognized expert in intellectual property with close to 30 years of professional US, Canadian, and international experience in all facets of intellectual property law and business. His firm is the largest brokerage firm in the world and has transacted over 4,500 patents in the past decade.
When we sat down with Louis, we hoped to be able to provide our listeners with a 101 style talk on the ins and outs of patent monetization. What we got was so much more and so very consistent with our mission of helping our audience see around corners and help their future selves. Louis begins with some excellent historical perspective and an overview of the state of the market, but really drives it all home with a plethora of forward-thinking strategies that make for more robust, defendable, assertable patents. Patents are a long game. The little things you do now can have tremendous impact over the next 15 or more years of your business journey and it’s vital that inventors and practitioners start keeping these strategies in mind, if they have any hope of crafting battle ready, commercial-grade patents.
Louis is joined today by our always exceptional group of IP experts including: * Ashley Sloat – President & Director of Patent Strategy at Aurora Consulting * Shelley Couturier – Patent Strategist and Search Specialist here at Aurora * David Jackrel – President of Jackrel Consulting * David Cohen – Principal at Cohen Sciences * Amy Fiene – Patent attorney at Vancott and adjunct professor at BYU * Neil Thompson – Patent agent at Torrey Pines Law Group
