Avoid Wishful Thinking Patents
Many patents are filed with “wishful thinking”. This occurs when someone wants protection on a product but does not realize what the scope of the invention will actually be.
For example, let’s say a company is making a fully automated, table top ice cream machine. Consumers will load up the machine with various ingredients, and the machine will process the ingredients into a fabulous frozen dessert. The CEO usually tells the patent attorney, “I want a patent on this.” And the patent attorney goes to work.
There are plenty of ice cream machines on the market, from hand cranked or motor-assisted cranked machines to automated industrial-sized factories that produce the same basic product.
In order to get a patent, the patent claims may include an electronic scale for measuring ingredients and a chiller for pre-chilling liquid ingredients prior to processing.
The result is a patent on a table top machine with ingredient reservoirs, a scale that measures ingredients, and a pre-chilling system.
If a competitor were to build the same machine without the scale that measures ingredients, they would not infringe and the patent would not stop them. This might happen, for example, when a competitor’s machine uses a pre-measured kit for frozen desserts, which might eliminate the need for the scale.
The CEO does not realize that even though their patent application describes all of the many elements of their product, the patent claims are actually very narrow and easy to design around. What the patent actually protects – from a legal standpoint – is much different than what it describes.
How to prevent this from happening.
The first way is to educate the CEO to help him or her understand what might actually be covered by the patent. In the example above, the CEO may have believed that the point of novelty was that the machine was fully automated. However, the true, legal point of novelty may have been the scale for measuring ingredients.
The CEO believed the patent would keep the semi-automated competitors out of the field and probably made critical business decisions based on that belief. However, the true point of novelty was merely the scale, and a design around analysis would have uncovered both the narrowness of the claim and the opportunity for a new product line.
The CEO needs to know the protection afforded by the claims of the patent, not the description. The CEO should steer the company’s business proposition to align with the patent claims (or vice versa).
When the CEO believes that their patent is much more broad than it really is, the company’s marketing and product roadmap often wanders into unprotected territory. The result is that they build market and brand equity that is not reflected in their patent assets, which causes the patents to not have their intended value and causes the business to not to be able to use the patents effectively.
 Design around analysis is discussed in Chapter 4 of Investing In Patents. A design around analysis does not have to be expensive, but merely a thought experiment with the inventors or maybe some technical people.
This is an excerpt from “Investing in Patents” by Russ Krajec.