How To Obtain Software Patents Faster – Part 3

This is the third part in a three part series on how to obtain software patents more quickly than is normally possible.  The approach that we describe here is described in more detail in our article on the leading patent law blog, IP Watchdog, entitled, “A Revolutionary Approach to Obtaining Software Patents Without Appealing to the PTAB.”  We’ve combined these techniques with those described in parts 1 and 2 of these series to obtain software patents for our clients in less than a year, which is significantly faster than the 3-5 years that is common when using the default filing methods.

The strategies that we describe in this article, unlike the techniques described in parts 1 and 2, doesn’t involve using a particular process at the Patent Office. Instead, it involves using a specific strategy for drafting patent applications, a strategy which in some ways is the exact opposite of how I and many patent attorneys were originally trained to write patent applications. Let me go out on a limb and say that the way I was trained as a junior patent attorney is both out of date and in many cases is designed more to protect the patent attorney than the client. We at Blueshift IP often use the strategy that I am going to describe, among others, to obtain software patents for our clients very quickly without sacrificing strength, defensibility, or enforceability. The essence of this strategy is to write very technically detailed and accurate patent specifications that also describe the invention at several different levels of abstraction, ranging from extreme detail to very abstract and everything in between. We then write patent claims that are narrow but which still cover the vast majority of the commercial embodiments of the invention, i.e., the vast majority of ways in which our client and their competitors are likely to implement the invention in the actual products and services that they will sell in the near future.

If the significance of this isn’t clear to you, it may become clearer by contrast to the way I was originally taught to write patent applications and the way in which many patent attorneys still write patent applications for their clients today, particularly software patent applications. I was taught to write a patent application with very broad claims. Consider a new mouse trap. I was taught that if the client came in with a mouse trap that had a wooden base and a metal hinge with a spring connected to it and a latch, that I should write a specification that described that physical mouse trap and then write claims which abstracted from the specific details of the mousetrap as much as possible. Those claims might, for example, describe the wooden base as a “support member” in order to avoid limiting the claims to a base made out of wood or to any particular shape.

This strategy still has many benefits today and often is valuable but, when taken to an extreme or employed at the wrong time, can make result in the patent application receiving many rejections and can, as a result, delay the grant of the patent.  In the context of software patent applications, overly broad claims can elicit “abstract idea” rejections, which can be difficult to overcome.

To address these problems, we have developed a strategy in which we often (and in close consultation with our clients) write patent claims that are quite narrow and targeted to cover the software that the client is selling and that their competitors will be likely to sell in the near future. This, we have found, simultaneously achieves the goals of creating claims that cover the client’s products and those of the competitors without being so broad as to elicit “abstract idea” rejection.  These narrow claims also tend to be easier to distinguish over prior art and are less likely to receive rejections for being unclear. The result is often a strong and defensible patent that is granted relatively quickly.

The second part to this strategy is to file continuation patent applications to pursue variations on the claims that were granted in the first patent.  These claims may cover the invention from a different angle and/or be broader than the claims granted in the first patent. As these continuation patent applications are granted over time, our clients obtain an increasingly broad and powerful patent portfolio.

This strategy, which involves filing a narrow patent application first and filing broader patent applications later, is the opposite of the older and still common strategy that I described earlier, which involves filing a broad patent application first, followed by increasingly narrow patent applications.  The benefit of the strategy that I’ve described in this article is that it results in a first, commercially valuable, patent being granted quickly. If this initial patent is written so that it is not too narrow, it can cover the client’s own technology and the vast majority of knock-offs of that technology and thereby provide the client with valuable patent protection much more quickly than is otherwise possible.  Even if the initial patent could in theory be broader, in many cases the additional time and expense required to obtain such a broader patent is not justified by the marginally broader protection that would be obtained. And our strategy enables the client to obtain broader protection through the use of continuation patent applications.

For many of our clients, there is significant added value in obtaining a first patent on a new product a year or two sooner than would be possible otherwise, and this speed more than makes up for the narrower scope of the claims.  Consider the difference between waiting three years to have any patents on a product and obtaining a first patent on that product within a year. This is the difference between having no patent protection on the product during years two and three and having one enforceable patent during that time.  This is a difference with significant commercial and financial consequences for the client.

We hope you enjoyed our three part series on how to obtain software patents more quickly. We have only scratched the surface–there are many other strategies that we use to obtain patents for our clients efficiently and effectively, and the devil is in the details. Choosing the right strategy or combination of strategies and executing them effectively requires a skilled, qualified, and experienced patent attorney.  Contact us at Blueshift IP to find out how we can accelerate the growth of your patent portfolio.

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