In this part 2 of a series on 4 W’s of patent, we will consider the what of patent, specifically, the reasons to focus on patenting inventions that are “in your wheelhouse.”
In this article, we will address three “what” questions:
- What is a patent?
- What kinds of inventions should you patent? (Are they in your wheelhouse?)
- What goes into a patent?
Recap: 4 W’s—Who, What, Why and When of Patent
In part 1, we considered the question, who should apply for patent? I divided the world of aspiring patentees into two camps: (1) Laypeople who have an “idea,” and (2) People who are “in the business” of the particular technology, industry, and field of invention. The layperson often has false hopes, while the technical expert often overlooks the patentability of their own inventions. (In parts 3 and 4, we will address the why and the when of patent.)
Now, let’s discuss the what of patent, addressing the three “what” questions stated above, each in turn.
1. What is a patent?
A U.S. utility patent is the legal right to exclude others from practicing the claimed invention for a period of 20 years from the filing date. How do you make money from a patent? The best way is to exercise your exclusive rights and practice the invention for profit. For more on that important point, see my Number 2 most popular video, How to Make Money on Your Patented Invention. (Number 1 is “Will a Patent Attorney Steal My Invention?”)
2. What kinds of inventions should you patent?
Generally, you should patent inventions that are in your wheelhouse. Wheelhouse is a popular term in many fields: It probably originated from the wheelhouse of a ship, which is where a captain is comfortable, knowledgeable, and in control. The wheelhouse is the field of your business, your technical expertise, your industry, your niche. It’s the field in which you’re most knowledgeable and most likely to succeed.
When an invention is in your wheelhouse, sadly, that’s when you’re most likely to overlook it. It seems obvious to you. Your technical people just applied their knowledge and skill to solve the problem in front of them. All they did was fill the customer’s need. They bought the control system from a vendor who worked to your company’s specifications. It’s not rocket science, it’s just an incremental improvement. This is exactly when to call your patent attorney. (Actually, it’s better to call before you work with the vendor and unveil the improved product to the customer, but better late than never.)
Let’s take a pair of contrasting examples: “In the wheelhouse” versus “lost at sea.”
Apple knows a great deal about smartphones and computers. They’re in that business. They make and sell those products. They’re leaders in their fields. They file and issue a gazillion patents every year in the U.S. and all over the world. Then they sue the bejesus out of competitors like the large Korean multinational company known as Samsung. (I’ve previously written about Apple and Samsung.)
In contrast to its core businesses, in what field is Apple a dabbler? How about automobiles a/k/a cars? If you drive down a commercial street of any city, you’ll see car dealers stacked end-to-end, with names like Ford, Chevrolet, Toyota, BMW and more. You won’t find an Apple car lot. And you won’t be able to buy a car at an Apple store. Yet Apple is filing lots of patent applications on auto-related inventions. See, for example, a recent article on 8 Apple patents that shed light on its car plans (Tech Insider, Oct. 30, 2015).
Google is another tech company that has a core business (search engine) while also making a big splash in the largely unrelated field of automobiles, specifically, self-driving cars. Google is patenting its way into the field (Washington Post Nov. 27, 2015). (I’ve previously written about Google and its patents.)
There are countless examples of companies that have strayed from their core business into a peripheral technology. Having pursued the technology, they naturally patent the resulting inventions, without first having a definite plan for how they’re going to succeed in the new line. One notorious example is the time Exxon went into the semiconductor business (and failed). Atlantic (May 17, 2013). Exxon lost a cool billion dollars on that investment.
So before patenting new technology that is only tangential to your core business, ask yourself:
- Do we really want to be in this business?
- Do we have a chance to gain market leadership?
- What kinds of revenues and margins do we expect to achieve?
Don’t patent what’s only peripheral or tangential or a hobby.
Instead, patent the products and improvements that are in your wheelhouse. Get patents that you intend to practice, and that you will be ready to enforce against a competitor, should they copy your invention, as they surely will be most sorely tempted to do.
Get patents that you are willing to defend in post-grant review proceedings in the Patent Office.
By the way, software patents, and to some extent all patents, are under attack since the America Invents Act of 2011. As with all legal matters, you may wish to engage an attorney to advise and represent you as you enter the patent system.
What you want is not just any patent but a well-written patent that will survive post-grant challenge. For a given budget, most companies would be better off to pursue fewer patents—focusing on inventions in the wheelhouse—and invest more in each one. See my article, how to invest $100k in patents now.
Get patents for which you might seek not only U.S. but also international protection, because, after all, competition in many fields is global.
In sum, patent the inventions that are in your wheelhouse, and your company’s fortunes will rise like those of Apple, Google, and Exxon. Then, if you must, you can gamble the excess billions on inventions like self-driving cars and semiconductors.
3. What goes into a patent
What should you put into a patent? Here’s the legal standard: The patent application must include (1) a full and detailed written description of the invention, (2) sufficient to enable a skilled person in your field to practice the invention, (3) without withholding the best mode for practicing the invention. Every claimed element of the invention that can be shown in a drawing must be shown in a drawing. The application must end with one or more claims distinctly pointing out what the inventor understands to be his or her invention.
Counterintuitively, a “broad brush” disclosure usually does not result in a broad patent. It may not result in a patent at all, but only in an endless series of rejections. On the other hand, a thorough patent application that includes the kinds of details likely to be useful during prosecution—this requires the judgment of an experienced patent attorney—will result in a stronger patent with broader claims commensurate with the scope of the invention.
What inventions should you patent? Let’s put it this way: A patent on a “minor” improvement that’s in your wheelhouse usually will pay better that an exciting idea that isn’t in your line of business.