Mirror Image Patent Prosecution
October 30, 2010Recently, I have had the interesting experiences of acting as an expert witness in a patent infringement lawsuit and learning that a patent that I drafted and prosecuted has entered litigation.
These experiences raise the question for me that I would raise with management (potentially including in-house counsel) in charge of litigation and patent prosecution: are the criteria that you request for new patent applications congruent with—the mirror image of—the criteria that you use to select patents for enforcement?
History demonstrates that patents are successfully enforced on the basis of claim coverage, relevant prior art, and prosecution history.
In contrast, however, recent trends indicate that clients draft and prosecute patent applications based on factors such as fixed fees, low cost prosecution, and other internal metrics.
Internal metrics are academically fine and they undoubtedly improve snapshot balance sheets, but they are often fundamentally unrelated to the litigation or licensing value of a patent. If a patent is prosecuted with the goal of minimizing cost, then such prosecution may be risking the patent’s value in the enforcement or licensing context.
Stated differently, does anyone select a patent to be enforced—or does anyone pay to license a patent—because it cost the least to write and prosecute? Probably not.
Thus, clients who are serious about potentially enforcing their patents should draft and prosecute their applications with a philosophy that is the mirror image of eventual enforcement: obtain the best possible claim coverage, find and deal with the relevant prior art; and produce a prosecution history that enhances, rather than minimizes, the value of the issued claims.
Frankly, this need not increase overall costs. Instead it should helpfully direct the costs to meet the desired enforcement goal. It appears, however that clients can be tempted by certain selected cost metrics; i.e., two patent applications drafted and prosecuted for $X,000 are automatically “worth” more than a single patent application drafted and prosecuted for the same fee.
This is not to blame in-house counsel. Often, other management views legal services (inside and outside) as a necessary, but generally undesired, cost that ought to be minimized whenever possible. This can encourage a goal of getting more items (patents, depositions, whatever) for less cost, but without keeping the true objective (litigate the patent; win using the deposition) in mind.
The numerical goal of getting more items has been referred to as the “pile of coal” theory; i.e., if you gather enough individual lumps of coal, the weight and time will eventually produce a diamond. Using a different starting material, this is also known as the “pony in there somewhere” school of thought. Enjoy Christmas morning.
