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In our
experience as
product development
consultants, we have found
there are seven common
reasons why patents often
fail to protect a company’s
technology innovations
that what’s just been launched
doesn’t actually infringe their
patent. The company’s patent is still
a legitimate piece of paper, but it
is no longer effective in protecting
their position. In our experience as
product development consultants,
we have found there are seven
common reasons why patents often
fail to protect a company’s technology
innovations as originally intended:
INNOVTE PNRTOIVTEE SCTTEINPG THE
In some cases, technical teams
spend so much time developing a
particularly technically-challenging
aspect of a new product that they
fail to spot that that wasn’t actually
the inventive bit when briefing their
patent attorneys.
FNEOATT PURRIEOSR ITISING KEY
Although patent attorneys are skilled
and experienced in delivering a good
claims structure, they rely on the
technical team to correct articulate
the significance of certain features.
If those details are not properly
communicated then the patent may
end up with a claims structure that
under-protects key features. Or, it
may have a claims structure that
unintentionally makes it easier for
competitors to design around it.
FEOMCBUOSDIINMGE ONNTS S PECIFIC
One of the most common mistakes is
making the patent so specific that it
protects a specific embodiment of a
product, not the enabling technology.
For example: if a patent attorney
had been told that a particular
invention had been designed to have
two magnets (when one or three
would work equally well) and didn’t
challenge the technical team, then
that feature could end up going into
Claim 1. However, all the fal-back
options would then be killed
off when a competitor gets a
similar product working with a
different number of magnets.
ADMESEINGDNISN G AFTER FILING
If the product design
changes, then it’s important
to ensure the patent protects
the current invention rather
than an earlier version of it.
Otherwise a competitor no longer
needs to come up with anything
particularly inventive to get around it.
In fact, they can just clone the product
(material for material, and dimension
for dimension) because the patent
isn’t for the product that’s available.
UOSRI DNEGF WINRIOTINOGN NSUMBERS
If a patent attorney is accidentally
given the wrong dimension or
specification for something, which
becomes referenced in Claim 1,
then all claims will be undermined.
So if the technical team provides
an internal diameter when it should
have been the external diameter then
the main claim (and all dependent
claims) fails to apply to the product.
ANLOTTE CRONNATSIIVDEE RING APPROACHES
Sometimes patents are written simply
to protect the specific way that the
problem was solved, and companies
don’t consider or patent alternative
approaches that competitors could
exploit to achieve the same result. It’s
also worth remembering that while
another technology might not be ideal
for the company itself, a competitor
might take a different view because
of its suppliers, distribution channels,
manufacturing partners, and so on.
FBOEICNUGS TEODO INDUSTRYEven
if they are not immediately
on the company’s horizon, it is
worth thinking through all potential
applications and markets for a new
technology. For example: the scope
of a patent might be unintentionally
narrowed to include, for example,
all food and drink applications,
when it could also be a multi-billiondollar
technology in pharmaceutical
manufacture.
Closing holes after a patent has
been filed, or even after product
launch is often still possible, but it
is always more challenging and
expensive. However, it is one of the
areas where involving an external
product design consultancy can
be invaluable in bringing fresh
perspectives, as well as experience
in analytical tools (such as TRIZ and
MECE) and the use of structured
innovation processes. In the case
of patents, where the constraint for
mapping new ideas is the patent
itself, the design team could help to
identify alternative approaches and
workarounds to deliver the required
functionality without infringement.
And, of course, those ideas or
technologies could originate from
outside the company’s own industry
or areas of expertise. Having
identified any weaknesses within its
core patents, what a company then
does will depend on its own situation.
However, one option is to introduce
new filings with scopes that can close
any loopholes before a competitor
discovers them and decides to
develop a competitive offering: safe
in the knowledge there is no risk of
being sued or becoming embroiled
in infringement proceedings. !
as originally
intended
TCOOMPE LAND
Senior consultant
at 42 Technology
JUNE 2020 | WWW.EUREKAMAGAZINE.CO.UK 15
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