What Next?

• 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: 221-243

221

Introduction

You’ve done a lot. You and your teammates have made signicant advances

in your technology and you have decided to protect your intellectual prop-

erty by ling patent applications. You have recognized that the value of

individual patents that just protect a single solution to a specic problem

is limited. You have also recognized that having teammates ling discon-

nected patent applications for their separate inventions also has limited

value. What is worse is that type of approach can be costly to implement,

can undermine your being able to obtain valuable patent coverage, and,

because of statements made in either the applications themselves or dur-

ing prosecution, you will have established a le history or a paper trail that

may impede your being able to obtain future patents or even successfully

assert the ones that you have.

You have prioritized both your inventions and potential patent applica-

tions and determined a course of action that should allow you to obtain

those patents necessary to protect your intellectual property. During

that process, you sought to own the problem [1] rather than just seeking

14

What Next?

222 A Guide for Implementing a Patent Strategy

patents on particular technical solutions to specic problems.* You have

coordinated your patent activities to best facilitate obtaining broad cover-

age without prematurely disclosing information that may limit your ability

to obtain future patents.

You have proposed claims that completely describe each of your inven-

tions and ensured that no two applications are claiming the same invention.

You took deliberate care to ensure that you have claimed one invention

per application. You conducted a thorough prior art search and, perhaps,

revised both the claims and the description of the problems that you solved

so as to circumvent the teachings of the prior art. You then wrote disclo-

sures that supported your claims, including a description of the preferred

mode of practicing your inventions.

You reviewed your entire folder of proposed patent applications to

ensure that you were, indeed, on a path to owning the problem. During

the review process, you have recognized what technology will need further

development, making it suitable material for future patents and carefully

avoided disclosing that information in your present applications. Aer all,

you do not want your own developments to become prior art used to reject

your future applications.

And, during this entire process, you always remembered who consti-

tutes the intended audience for your patent applications. You included

descriptions of how you would unambiguously establish infringement of

your patents and envisioned yourself explaining your inventions to mem-

bers of a jury.

You met with legal counsel, probably on multiple occasions and edu-

cated them about your inventions. With their guidance, you revised the

claims and the disclosures, and perhaps even the descriptions of the prob-

lem solved for your applications, as you prepared to le your patent applica-

tions, some concurrently and some sequentially, depending on the specic

material disclosed in each. Yes, you have done a lot of work to get this far.

And you have done even more. e big day arrived and you led your

applications, which are now being prosecuted. Perhaps some were allowed.

* As a reminder, all-too-oen inventors le applications for novel solutions to specic tech-

nical problems that they have solved, losing sight of trying to broadly protect their intel-

lectual property. “Owning the problem” refers to generating a patent portfolio that impedes

others from practicing your technology and invading your market space without obtain-

ing a license from you. In order to own the problem, you seek to obtain patent coverage

on alternative approaches to your envisioned products, including the enabling technology

and you focus heavily on those patents that your competitors would need to enhance their

products.