The first step in build a market dominating patent portfolio is to undertake a survey of the patent landscape in your marketplace. For more information on how to perform a prior art survey please see Competitive Analysis and Patent Portfolios . This analysis will show you where there are gaps in the prior art that can be exploited and also help stimulate your thinking about design options. Gary Boone, the inventor of the microcontroller, explains the advantage of surveying the prior art this way. “Most engineering design groups do not feel there is much to learn by reading patents. I feel that’s unfortunate, because there is a huge amount to learn from the accumulated five million issued patents, just picking up the U.S. patents alone.”
The next step is to define your invention or area of technology at a systems level and in terms of a block diagram with 3-6 blocks. Once this is completed it is time to brainstorm about alternative ways to accomplish the same objectives as your invention(s). One of the main goals of this process is to make sure you cover all possible design arounds. Wikipedia defines designing around a patent as “to invent an alternative to a patented invention that does not infringe the patent’s claims. The phrase can also refer to the invention itself.” In my experience, most design around solutions are based on concepts that the initial inventor consider but then rejected. As a result, it is important to build a patent portfolio that covers not just the implementation the company intends to pursue, but approaches that were thrown out by the design team as suboptimal.
In order to stimulate ideas by your team I suggest first thinking of all the alternative designs to the system level of your invention. Next you want to consider all the innovations in the components used to build your invention, including potential design around for those components. For instance, if you are Edison and invent the high resistance incandescent light bulb a component of your invention might be the socket for connecting to the electrical grid. You will want to patent not only your socket, which might be the screw design, but alternatives. For instance, you might have a plug in design or your might have a design that clamps onto the light bulb or a twist and lock attachment. Repeat this process for all the components of your invention, which you identified as part of your block diagram.
Now you should turn your attention to all the possible subcomponent level inventions. For instance, in the case of Edison’s light bulb how you connect the filament to the electrical leads or how to make different shapes of out of the filament. In fact, Lewis Latimer developed a method of making a filament with an “M” shape that was commercially important. You should also consider if there is any patentable ideas related to manufacturing your invention. If there are any manufacturing oriented patentable ideas, it is important to determine if it would be better to keep these a trade secret.
Finally, you need to consider super system implementations of your invention. What do I mean by super system implementations? Super-system invention usually incorporate your invention as a component of a larger system. In Edison’s light bulb case the super system would include the electrical generator, how to power the electrical generator, how to transmit and distribute the electricity, fuses to protect people and structures, etc. According to Hot Property, by Pat Choate, Edison eventually received 424 patents related to the light bulb and the associated electric power system. Unfortunately for Edison, he failed to take a license to alternating current from Tesla. Alternating current was superior to direct current for transmitting electrical power of long distances and significantly hurt Edison’s commercial position.
In order to dominate an area of technology it is important to undertake this brainstorming exercise at the conception stage, at the prototype stage, and just before product release. At the product release stage is often helpful to discuss problems that the design team had to solve. These solutions are often the subject of a patent. By undertaking this brainstorming process at all these stages it will ensure that ideas generated in the early stages are not missed, that the patent portfolio is aligned with the business goals, and that later inventions are not overlooked. It is important to remember that just because you identify a patentable invention does not mean that you necessarily decide to file a patent on the invention. Once the invention is identified, you still need to decide if it makes business sense to file a patent application.
This process will result in a patent portfolio that dominates an area of technology. The alternative is to file a few patents that instead of giving your company a commercial advantage, just allow it access to a market.
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