Lessons from SuperSoaker: Strengthening Your Patents to Protect Your IP – Part 5 of my notes from 2017 MIT Innovations in Management Conference

Benjamin Roin – Professor of Technological Innovation, Entrepreneurship and Strategic Management, Associate Member, Broad Institute, MIT Sloan School of Management

The common wisdom on patents:

  • patents are critical to R&D investments in a few industries (eg pharma, biotech, medical devices)
    • these industries rely on patients blocking entry of competitors for many years
  • less important in other industries eg consumer goods, software, consumer electronics and automotive
    • less effective at blocking competitive entry – though may invest in existing patents

A patent is a full detailed disclosure in exchange for right to sell.

The alternative to patents is trade secrecy – which is only a secret to the extent that people can’t figure it out or view it. However if someone can reverse engineer your product, this isn’t useful.

What can be enforced?

An effective patent is an enforceable patent

  • It needs to be broad enough to cover the competitor’s products
  • You need to be able to detect infringement
    • harder for processes if they occur behind closed doors
  • You need the time and resources to enforce your patents
    • long and expensive process

The SuperSoaker

“Talk To Me Products” had filed a patient in 1978 which covered the design for the 1990 Supersoaker. The patent talked about a chamber therewithin which the Supersoaker didn’t have, so SuperSoaker won the patent claim.

There are industries with automatically strong patent protection (pharma – one chemically definite substance, medical devices – due to FDA regulatory approval costs).

In other areas there are ways to get moderately strong patient protection:

  • you can use a portfolio strategy with 5-10 patents, each one covering a different aspect of the technology
    • this counters reverse engineering of a product
    • but it costs $
  • you can help patent attorneys draft claims to avoid design-arounds
    • increase competitors design-around costs by avoiding easy design-around strategies – eg get your engineers to try to design around your patent prior to approval
    • but this takes up your engineers’ time
  • use continuations to keep a patent application on the invention pending even after the first patent issues
    • opportunity to change claims to cover some design-around straegies
  • Leverage trade secrecy as a complement to your patents whenever possible

Beyond the standard advice

  • Don’t rely solely on your engineers and patent lawyers to decide what to patent
    • engineers think about patenting the novel, creative advances – but that’s not the goal, the goal is to block competitors from your market space
  • so you should patent anything you can that your competitors need to do to enter the market
    • eg if you can’t patent a piece of tech, can you patent the use case (eg as a handheld device)? So:
      • write up a list of everything a product must have or do to compete successfully in your space
      • involve the product development manager & the other business oriented employees working on the product, not just the engineers
      • then work with your patent attorney to figure out what you can patent on that list

 

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