Developing a Patent Strategy and Patent Engineering

• Author: Donald S. Rimai
• Profession: Recently retired from Eastman Kodak, where he worked as a researcher and intellectual property manager in digital printing and adhesion science
• Pages: 33-58

33

Most companies today, from small start-ups to major corporations , realize

that there is real money in intellectual property . High pro le cases such

as Apple ’s suits against Samsung and Google have made it very obvious

that there can be just as much pro t , if not more, in enforcing patents as

in making the product. Because of this, there has been great emphasis on

applying for and obtaining patents, with companies scrambling to increase

their holdings.

 is surge in patent popularity has made it very clear which companies

understand the real value of their intellectual property and which ones do

not. Adding confusion to the mix is the reality that all of us are competing

on a global level; the moment you introduce a great product, competition

will spring up throughout the world, o en in countries with substantially

lower taxes, labor costs, and less government regulation than the United

States .

A single U.S. patent will not protect you if a company in Korea decides

to copy your technology and sell the resulting product throughout China

and India . For many business owners , deciding which patents to pursue

3

Developing a Patent Strategy

and Patent Engineering

34 Patent Engineering

and which to leave on the shelf seems harder than inventing the technol-

ogy in the  rst place. Your business only has so much capital —how do

you go about formulating and executing a patent strategy that will yield a

high value portfolio without bankrupting your company? Let us  rst dis-

cuss  ve patent strategies that, although all too frequently used, generally

result in weak portfolios and simply burden your company with unneces-

sary expenses .

Five Patent Strategies

A single patent is analogous to a rock tossed into a stream.  e water in the

stream may be diverted around the rock. In some instances the water may

even  ow over the rock instead of being diverted. If the  ow of water is to

be stopped or controlled, it is necessary to use many rocks to build a dam.

A single rock, no matter how large, will not stop the stream from  owing.

It is the same situation with patents .

A single patent may force competitors to seek other ways around your

technology , but it will not stop them from introducing competitive tech-

nology . In some instances, they may even patent important enabling

technology * that prevents your company from practicing your invention ,

forcing your company to grant patent rights and even pay licensing fees

much the way that the water can  ow over the individual rock, rather than

being diverted around it.

 e only way to prevent this from occurring is to develop a su ciently

strong patent portfolio that allows you to own the entire problem , rather

than simply a speci c solution to a problem.

Absent that ability, your company needs to own enough of the problem

so that your competitors must negotiate favorable patent exchange agree-

ments with you if they are to participate in this market.  is is akin to

the patent portfolio s that were previously discussed with respect to the

O2 sensor . In that instance, no individual company owns the entire prob-

lem, but, rather, companies own enough of the problem to allow them to

produce automobiles.  ose that do not are forced to buy sensors from

companies such as Bosch , paying the price that Bosch wishes to charge.

 ey may also have to buy the other components and so ware related to

* Enabling technology di ers from the fundamental technology that encompasses a

product. Rather, enabling technologies comprise the solutions to the problems that would

pose obstacles towards the ability to practice or commercialize the fundamental invention .