Imagine being a general going into battle, and all the unanticipated intelligence about your enemy is gained as the battle is engaged. Now imagine having a magic “pause” button that halts the battle, and enables you to resupply, re-arm, and redeploy your troops in the optimum way to reengage the enemy forces. The battle is then restarted on your terms. The strategy this newsletter reveals is just that powerful when it comes to battling patent infringers.
This topic is one that I developed after authoring the book: “The Bulletproof Firearms Business – The Legal Secrets to Success Under Fire”. It’s sure to be included in my next edition, but it’s too important not to share now. In fact, this article will be used repeatedly as a guide for my clients as they face the important scenario it covers.
Truly one of the proudest days in the life of any inventor is the day his patent is allowed. Even putting aside the emotional pride, the effect of a new patent on a business can be impressive, and start an era of increased success and profitability. And frankly, a successful patent outcome means that you can stop investing in the patent (aside from maintenance fees every 3-1/2 years) and you can start reaping the rewards of your investment in the patent process.
But sometimes, letting a successful patent outcome be the end of the process can be an expensive mistake that sacrifices a powerful strategic opportunity. The heart of this story is about the scenario when we secure for a client solid, broad patent protection, and you feel like you really couldn’t wish for anything better. It doesn’t happen all the time, but we’re all delighted when it does. Before we cover the specialized “Keep-Alive” strategy we recommend for successful, high-value patents that are likely to be infringed, we’ll cover the more typical reasons why we might want another bite of the apple as a patent application is ready to be granted.
It’s legally critical to realize that a Continuation application must be filed before the “parent” patent application issues or is abandoned. It’s like an expectant mother, who must remain alive for her baby to survive.
Another reason to continue the patent process is because the examiner had ruled that our application contained more than one invention. The examiner responded with a “Restriction Requirement” that essentially said: “Hey, you paid only one filing fee, so I have to examine only one invention, so tell me which invention you want me to examine.” We responded, and now a patent is going to issue with those allowed claims. Our next step is to pursue a “Divisional” patent application that includes the claims for the other invention the examiner didn’t look at the first time around.
Sometimes, when your invention has recently been changed or improved, or you have invented something closely related, we might want to file a new patent application on the new invention. It can make sense to make this part of your first application’s “family” by filing a “Continuation-in Part” application that has the new material to try to protect. This helps avoid being rejected based on your own first patent.
We even have variants of these in which we file what is effectively a Provisional patent application (inexpensive and informal) to keep add updates and keep alive the old rights.
It’s clear that fighting for better protection can be a smart reason to keep up the fight with a new patent filing that continues the family of your first patent application. So why would you invest in keeping up a fight on a patent application with all the protection you had hoped for? Why pay more to keep fighting a battle you’ve already won?
Sometimes, things can change in the years after the application was filed. If we could have foreseen the changes, we’d have adjusted our strategy to protect your invention. More typically, we gain insight into an infringer’s weaselly strategy when their lawyer responds to our first accusation of patent infringement.
So when we file the patent application, we really thought we had the strategy down, used just the right terms, and had the patent rights locked in. But the infringer’s lawyer comes up with another interpretation of our patent language that they argue means their client doesn’t infringe your patent. They’re probably wrong, and you’ll probably still win a lawsuit (one you’d really rather not have to fight), but it means they have an argument.
Their argument means that they won’t roll over, that they can force you to invest in escalating the battle, and that if you go to war, it will be a little more costly to fight the infringer, and maybe you’ll be a little less likely to be successful against the infringer.
When you see their weaselly letter telling you why they think they don’t infringe your patent, your first reaction will be something like: “I wish our patent said ‘planar surface’ instead of ‘flat surface.’” (Or “connected to” instead of “attached to,” or whatever). If you could go back in time, you could pre-empt their weaselly argument, and force them to roll over.
Normally, we make claim changes to clarify our strategy to get around rejections the examiner makes. Sometimes, we narrow the claims to avoid some prior art technology the examiner brings up.
In this instance, you can change the claims to demolish the weaselly interpretation of your infringer’s lawyer. You can even add new claims that are narrowly focused on your competitor’s product. Like a lethal rifle shot, instead of our usual broad blast. Narrow claims are much stronger against patentability challenges, and will be much tougher for the other guy to weasel around.
Basically, the letter the lawyer gets back from us will be short and sweet. It will amount to our saying: “Thanks for the creative (weaselly) claim interpretation. We’ll be sure to add some claims to our PENDING continuation application that account for that, and will be certain to cover your client’s invention. Now, let’s talk about whether we’ll let you pay royalties to continue with your infringing product, or if we’ll just shut you down.” And keep in mind that when an infringer has been notified about patent infringement, they’re going to be liable for triple the damages if they continue.
So now you’re the general going into battle with the magic “pause” button that halts the battle, and lets you resupply, re-arm, and redeploy based on what you have learned about the enemy. The moment the opposing general realizes you have the magic “pause” button (which you can use again and again as they try to react to your advantage) the odds of their surrender on favorable terms will skyrocket. If you have capable forces and decent equipment, you almost can’t lose.
It’s the same when you’ve kept your patent strategy flexible using the anti-weasel, Keep-Alive strategy.
If you have decent claims allowed, but think you might deserve better, your investment in the effort won’t just potentially bring better protection, it will also give the added benefit of keeping your flexibility alive. During that period any infringer who arises will be mightily disappointed to learn you kept your patent family alive. Essentially, you can hit “pause” until you get the claims reworded that act as a laser-guided missile aimed right up their…er… down their throat.
Most well-written patents never need to be litigated because of the respect they normally receive; well-advised businesses usually back down when they realize they are legitimately accused of infringing a patent. But in borderline cases where they might not back down, your odds of needing an expensive six-figure court battle will be drastically reduced, any battle will be shorter, and your odds of winning the battle will be much greater.
But even if you’re absolutely delighted with getting patent protection that was as good as you hoped for (dare I say “bulletproof”?) it can still be a wise insurance policy to keep your strategic flexibility alive.
We simply file a continuation application, and play a slow game of ping-pong. This doesn’t require advanced lawyering, and is mostly the filing fee, and an administrative fee. Then, it just sits there, insuring you against the patent weasels.
Eventually, the Patent Office will take some action. Supposing that they reject the pending claims, we have up to six months to reply to the rejection. We file little more than a “no it isn’t” reply, so there is a little lawyering to do. But our response can be as simple as submitting a: “Look, we found a related patent we think you should put in the file” message. Eventually, assuming we aren’t pursuing a serious alternative claim strategy as discussed above, the examiner will issue a final rejection, requiring us to submit a new filing with some kind of new argument or submission within the next 3 to 6 months.
The cost per year to engage in this “Keep Alive” strategy depends on how fast the examiner turns things around, and how they respond to our minimal efforts to make arguments. Fees change, examiners differ, and Patent Office practices shift, but a small annual budget of maybe a couple thousand dollars is usually sufficient to keep your application alive for a potentially unlimited number of years. Each payment point is an opportunity to say no thanks, and be satisfied only with the granted patent.
In fact, one famous (or notorious) genius inventor had a patent application pending for 30 years. When he was finally granted his patent, the bar code reading technology he invented was widespread, and he collected royalties in the billions. (Note that since then, patents expire 20 years after the application is filed, so dawdling without having a first patent granted can’t extend your rights beyond the 20-year expiration).
If no infringing competitor arises, you’ll have invested in a little disaster insurance for a disaster that never occurred. But if a weasel pops up, you’ll be able to send him scurrying away, and be much less likely to become embroiled in an expensive and time-consuming infringement lawsuit.
This strategy isn’t for every one of your patents, but if you think there’s a better-than-even chance of facing an infringer in the next five years, it deserves serious consideration. If you already have an infringer out there, it’s a no brainer.
The critical lesson is the same one we share with industry friends who already have a patent filed by another attorney:
If you’re a client, we’ve already alerted you to these issues. If you’re not, call us, and we can provide a quick second opinion to advise whether we might be able to add to your patent protection, and whether this “anti-weasel” strategy might make sense for your company.