When your company has a product in the marketplace and the next innovative feature is ready to be launched, IP counsel is often asked, “Do we have it patented? Are we covered?” And while covering the feature with a patent filing or two can be adequate, some important features warrant having a strategic mini-portfolio to provide even greater protection from competition. These five questions are designed to help develop the intellectual property for that additional protection.
The idea is this, after having the main feature-covering patent filing ready, convene a small team of engineers and technical experts for an IP generation session. Make sure everyone knows the new feature being deployed, the main competitors, and their corresponding products. Then, get started:
1.) If any of our competitors were to build this new feature into their product what would they have to do that is different from what we’re doing to make it work in their environment?
This first question is great to set the stage and get the creative juices flowing. Bring in photographs or samples of the competitive products, and speculate how they would copy your company’s new feature. Figure out what they would have to do to make it work with their product–and then be sure to patent those designs to the extent you can. To help your team drive down into the details and into real protectable territory, ask question two.
2.) With these designs, what kind of problems will our competitors’ engineering teams run into in development and how might they solve them?
Covering any potential design with a patent still requires that it be inventive. So have your team use their imagination to predict the problems competitors will face, and then identify solutions to those problems. The resulting ideas will be much more likely protectable. And they’ll be surprisingly specific and very tricky roadblocks for your competitors.
I’ve found this to be the most natural part of the conversation with engineers because solving problems is something engineers love to do. This part of the meeting can move pretty quickly, so you may want to audio record the meeting and have it transcribed to not miss anything.
At this point, having identified and solved a bunch of problems that your competitors might have when trying to copy your feature, we’re now going to ask the team to solve a particular problem–the wide design around. Put the most reasonable claim you’d expect to get covering your company’s feature up on a screen or flip chart. Make sure everyone understands exactly what that claim covers. And then ask:
3.) Let’s assume that our company gets a patent with this claim protecting our new feature, what might our competitors–with their products–do to avoid this claim and still be competive with us?
Here the creative thinking shifts from how to copy the feature to how to compete with it effectively. Recognize that your competitors may not have to copy the feature to still be competitive. Their engineers and designers may find other things to do that result in a similar commercial effect. For example, if the claimed feature were a battery savings algorithm in a space-constrained electronics device, a competitor may find a way to shrink some components and make their battery larger–effectively matching your now improved battery life. As the creative thinking shifts up to a higher level with this question, be sure to drill down on any fruitful ideas so you have adequate disclosure captured.
As a side note, you may get some advanced claim drafting “help” here too. Sometimes these discussions can result in engineers picking apart the claim language. So it’s great to have this meeting before your initial application is filed, so if you do rethink the language, you have time to address it. In the alternative, you can draft a claim just for purposes of this meeting, so you don’t have a record of a bunch of skilled artisans debating what certain terms mean.
Having more than one enforceable patent against a particular party can really shift the balance of power in a patent litigation
Finally, the next two questions shift to true blue-sky thinking. By now folks are probably getting tired, so it’s a nice way to close out the meeting.
4.) Assume we successfully protect this feature and you’re the product manager over there at our competitor, what feature do you put on your roadmap next?
And.
5.) If we really do have this feature locked-up and with no viable design around, how might the competitor reposition their product to make a contrast with ours.
There’s typically not a lot of hard IP that is generated with these last two questions, but they can drive a lot of very interesting and helpful discussion. For example, you might speculate that when this feature-area is unavailable to a competitor, they may decide to simplify their product to compete at a lower price-point or they may double-down on an area where they have IP to develop a clearer feature contrast between the two products. Again, if any ideas are particularly interesting, dive down on them or table them for follow-up conversations.
Congratulations! You wrap up the meeting with at least a few valuable, protectable inventions that are strategically positioned to better protect new feature your company is launching. And because having more than one enforceable patent against a particular party can really shift the balance of power in a patent litigation, with a mini-portfolio on file, you can more confidently answer the question, “Do we have it patented? Are we covered?”
If you have any questions about portfolio building or if you’d like to discuss the strategy for your next product feature, feel free to reach out — I’m at mkoptiw@condoroccia.com.