Introduction to IP Strategies

Introduction to IP Strategies

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Strategies are my passion.  Yes, protecting inventions and names can be fascinating.  But strategies applied to the protection is where the protection really begins to come alive.

Perhaps a sports analogy is appropriate.  Almost any sports team has players where each player has a specific assignment – attack left, defend right, manage the center, watch a specific player, etc.  It would be a bit ludicrous to staff a football team with only 11 quarterbacks or with only 11 linebackers.  That simply would not happen.  Why?  Because each player on the team adds a specific value to the protection and overall strategy that is applied.

It is the same with intellectual property.  Too often IP protection is akin to having a team with 11 quarterbacks.  Taken individually, they may each look good.  But put them on a team, and they often will only adequately perform.  Strategies with respect to intellectual property therefore need to not only assess the value each individual asset is adding, but taken in combination with all other assets, what is the global protection offered by the portfolio.

The Simplicity Rule

Intellectual property can be extremely complex. At a minimum, they may contain complex names, ideas, formulas, mechanics, etc.  Additionally, patent applicants have the right to be their own lexicographer, thereby allowing the applicant to define any term to mean anything within the bounds and context of the application.^[1]See, e.g., 35 U.S.C. § 112, second paragraph   There is a need therefore to describe the invention/name in a very clear and precise way which avoids ambiguity.  In short, keep it simple.

Patent Applications

Patents in particular are known as being hard to read legalese.  There definitely may be some truth to this, as most patents are not written in standard English. This may pose some complications.

For example, if a reader of the patent application has to struggle to even understand what is being described, we may intuitively conclude that the effectiveness of the patent likewise decreases.  In lay man’s terms, if nobody can read it, then it really is not of much value.  So, lesson number one is to make sure that you communicate the complex ideas in such a way that anyone can understand.

The point here is not to suggest that a patent should not include complexity, for almost any invention probably includes complex parts.  Rather, the point is that such complex parts should be conveyed in a simple manner (e.g. the language used, etc.) rather than in a complex manner.

Think of this from a patent litigation point of view.  Someday the patent you write may be litigated.  And when it does, the complex invention you have written will need to be explained to a lay-man jury.  Such a jury may include a farmer, a teacher, a mechanic, a policeman, etc. – I think you get my point.  The more complex you write, the harder it will be to convey these ideas to a jury later on.^[2]As an example, see Paul Elias, “Apple Jurors Grappled With Complex Patent Issues In Trial vs. Samsung,” Huffington Post, published 08/26/2012, available at … Continue reading   Design and write patents in a simple manner.

I’ve heard it say that the true genius is one who is capable of taking complex ideas and explaining them in such simplicity that even a child could understand.^[3]John Locke was a great proponent of breaking down complex philosophical ideas into its simple parts.  He suggested that all complex ideas are composed of single simple ideas.  See, e.g., … Continue reading   Keep this in mind as you draft your claims and applications.  The more simple the language, the easier it will be to understand.

Trademark Applications

A trademark application can only identify the goods and services sought to be protected by the trademark by their common commercial names e.g., “computer software for accounting purposes;” or “shirts, pants, and shoes.” You can never expand the listing beyond the scope of what has been presented in the original filing; the addition of goods and/or services would require a new filing.

As such, the identification should state common names for goods or services, be as complete and specific as possible and avoid indefinite words and phrases. The terms “including,” “comprising,” “such as,” “and the like,” “and similar goods,” “products,” “concepts,” “like services” and other indefinite terms and phrases are almost always unacceptable. The terms “namely” and “consisting of” are definite and are preferred whenever setting forth an identification that requires greater particularity. Vague terminology should be replaced by “namely” and “consisting of” whenever possible. In limited situations for closely related goods, certain indefinite terms may be used in explanatory phrases that follow a definite term — for example, “fabric suitable for making coats, suits, and the like.”^[4]See Ex parte A. C. Gilbert Co., 99 USPQ 344 (Comm’r Pats. 1953).