Every patent attorney is trained to begin at the same place: the very end of the development pipeline. We ask the client what he built, how it works, and what else might accomplish the same thing, and we then write an application that reads like a technical diagram of the thing that walked in the door. In nearly thirty years of drafting patent applications, I have come to believe this is the most expensive mistake in the field: we patent the product the client has today rather than the business outcome he is actually seeking, which is revenue captured, investment attracted, and an exit worth having.
This is, of course, an easy application to write. The client knows his product cold, and the attorney need only translate what he already knows into patent verbiage, which leaves us as highly trained and well compensated legal scribes. I am not describing laziness or incompetence–the vast majority of patent attorneys are careful, ethical, and genuinely trying to serve their clients–but rather the job as it is actually defined and actually paid for. Her job is to get you a patent, not to get you a patent that makes you money.
Founders consistently underestimate how wide that gap is. When a disappointed patentee sued his patent attorneys for writing claims too narrow to reach a competitor’s product, he was required to prove what the courts call “the case within the case,” meaning that the drafting decision, and only the drafting decision, cost him his infringement suit. Anyone who has watched a patent travel from filing to enforcement will recognize how impossible that burden is. Indeed, there is legal authority for the proposition that your attorney bears no liability for a patent too narrow to reach your competitor.
Certainly there are patent professionals who will push a client to think harder about scope, and I have worked alongside a number of them. Nonetheless, it is not their obligation. Your attorney will cover the information you hand her and nothing beyond it, and a founder who assumes otherwise is relying on a service he never actually purchased.
Here is the part founders find hardest to accept. Your competitors are not reading your claims. They are watching your customers, studying what those customers buy and why they pay for it, and if they can deliver that same outcome by another route, your patent becomes an expensive description of a road nobody else needed to take. I have watched innovators get exactly what they asked for–a patent covering the thing they built–and then watched a competitor walk off with the market on an offering that never touched a single claim element.
That is the patent that gets discounted in diligence, sometimes to zero. An acquirer’s counsel does not need long to work out that the claims read on a product the market has already routed around. (I have been the person doing that reading, and it is not a pleasant call to make.) The money was spent, the patents issued, the portfolio looks respectable on a slide, and none of it legally stops anyone from serving the market you built.
So the instruction I give my clients is to stop patenting the product they have today and to start patenting the business outcome they are seeking. What is your customer actually buying, and what outcome is he paying you for? What would a competitor have to deliver in order to take that revenue away from you? Claim THAT. The mechanism by which you arrived there is a footnote. Done properly, this is what “makes it cheaper for your competitor to go through you than around you,” which remains the only working definition of a valuable patent I know.
In short, it is your responsibility, and not your attorney’s, to give your patent team the information that lets them cover the value you deliver rather than the device you happen to deliver it with–in other words, to tell them what they need to know to patent the business outcome and not just the product you are selling. Moreover, no one else in the process is positioned to do it, and no one else pays the price when it does not get done.
I gave an in depth discussion of this approach in my Winning with Patents Youtube Channel. If you’d like to learn more about my approach to not just getting patents, but getting patents that actually matter to your business, feel free to reach out if you would like to talk through what your patents ought to cover.