This is a transcript from a section of the course “Patents 340 – Invention Rating Checklist,” which is available here at IP.Education.
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The Detectability Scale from the Checklist
Level 1 on the detectability scale is undetectable without specific knowledge about implementation.
Some examples may be manufacturing processes.
Specialized manufacturing processes may be a huge competitive advantage and may very well be patentable,
but without access to a competitor’s factory, we would never know that they infringe our patented process.
In many cases, even if we could get access to the competitor’s factories, they would often physically protect specialized processes by shielding or other barriers.
These make it almost impossible to detect unless we had a source in the factory that provided confidential information.
The same can be said for software that may run inside a competitor’s datacenter.
Without access to their secure facility and internal knowledge about their software, we would never be able to prove that they infringed.
Anything with this level of detectability is best kept as a trade secret.
There is no purpose in letting your competitors know how you do your specialized manufacturing without being able to license it to them.
You are letting them use it for free.
Level 2 detectability is detectable through experimentation by subject matter experts.
An example of this level of detectability might be a clock circuit invention on an integrated circuit chip.
An industry expert may be able to analyze the layers of the chip and reconstruct all of its circuitry connection by connection.
This may be painfully time consuming, but it is physically possible to detect infringement.
Another example may be a chemical processing method where the method inherently leaves a tell tale marker.
It may be a small residue, but with the right analysis tools, it can be found.
In many cases, you will need to know that you should look for the infringement.
In a field like CPUs, there may be only a handful of competitors, and each competitor might routinely take apart and test the other competitor’s products.
In bigger markets with many different players – especially when the players are not large and established – it can be very difficult to police the market.
Level 3 is detectable through targeted investigation and experimentation.
Level 4 is detectable through inference based on observation.
Both of these levels assume that the invention is somehow hidden, and in many cases it is.
For software products, especially software as a service products, it may take a programmer to create some test scenarios to see if the service infringes a patent.
The difference between these two levels is the level of difficulty it takes to find the invention.
Level 5 is detectable through casual inspection or competitor advertising.
This is the best level of invention because the invention is either right out there where we can easily see it or where the invention is so important that the competitor advertises that feature.
This is getting ahead of ourselves in the analysis, but it is important to note that the really valuable patents are those that give a competitive advantage.
A manufacturing process improvement invention will lower your cost to produce goods and give an economic advantage.
But also, a feature on a product that is so compelling that customers will pay a premium is another kind of advantage.
Both of these kinds of inventions give you a competitive advantage, but the one that is customer-facing helps you differentiate on a head-to-head basis.
The most powerful inventions are those that win that battle for the customer, which is why level 5 inventions can be extremely valuable.
How do we deal with difficult to detect inventions?
When faced with an invention that may be hard to detect, I like to find a “marker” or visible effect of the internal process.
A patent can claim the marker, which might be the inevitable result of the undetectable process, and not the undetectable process.
For software inventions, I like to focus on the interfaces to find the visible effects of a software product.
The visible effect may be on a user interface, API, administrative interface, or some other detectable interface.
We need to think about effects of the invention that we can see or detect.
Depending on the circumstances, some inventions are well worth protecting, even when they are hard to detect.
These tend to be the inventions that have huge economic impact – and where it is worth the trouble to investigate whether someone infringes.
In most cases, however, we really want to find factors or effects that are easily detectable.