VPATAPP Alert_Patent Quality Makes a Difference

Source: https://www.lexology.com/library/detail.aspx?g=e9365c48-eb9c-4a41-99d8-ffe8c77df245

A patent must survive the challenges that await it. There are essentially five points in the life of a patent when it will be challenged.

1. Investment: Startups are constantly seeking investment. Investors increasingly look for whether you have patented your inventions. Depending on the type and level of investment, the level of scrutiny may vary. It may be modest. But substantial investors will want assurances that your patents will survive and effectively protect your business.
2. Acquisition: As the company grows and develops you may attempt to sell the business. And when you do, your patents are also on the block. The buyer will conduct diligence to ensure they are well-written, protect your business, and will survive if challenged. Does the disclosure adequately support the claims? Do the claims adequately protect the business? Are they commerciallyvaluable? Do they adequately cover the company’s current and developmental products? Will they prevent competitors from designing around? Unless all these issues have been thought through and addressed carefully in the original filing, it will likely be too late to do anything about it by the time that you were discussing these issues with investors.
3. Licensing: Your patents will be stress-tested if you try to license them. Nobody pays top dollar unless they are getting what they are paying for. Your licensee is likely going to conduct prior art searches and test the patents to see whether the claims are patentable. Do they preclude obvious design arounds? Will designing around will cost more than paying royalties under a license?
4. Post Grant Challenge: Europe has had post-grant challenges for decades. In 2012, the United States established a post-grant procedure. The United States and the European Union are formidable markets. Will your patents survive post-grant challenges in them? If they were prepared poorly on a shoestring budget, not likely.
5. Assertion: Ultimately, you may be forced to sue to enforce your rights. And when you do, the defendant will likely deny infringement and assert invalidity. Will your patent survive these challenges? Is the disclosure written clearly? Is it broad enough to support the full scope of the claims? Have you thought through how your invention is different from prior inventions, and not just from the art you were aware of when you filed? Once you sue, the defendant will be strongly incentivized to look a lot harder than you did when you filed the application. Will your patent survive? Or will it fail at the time when you need it most?

Quality boils down to your patent’s ability to survive all these challenges. Invest the resources appropriate to the significance of your invention to your business. Draft the application carefully. Adequately describe your invention. Differentiate it from prior inventions. Anticipate how others will design around it. A patent that survives these challenges is truly a high-quality patent.