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By Craige Thompson, JD, PE

When you start your business, you may be entering the patent game whether you intend to or not. If your business involves any products or processes that are less than about 20 years old, there is a chance that some aspect of your business could infringe unexpired patents.

If any of those patents belong to you, that is fantastic! Those patents are part of your “offense.” You control how, when and against whom they are used. They are a valuable asset to raise capital from investors or to generate license royalties. 

If any of those patents belong to your closest competitors, you may need some “defense” to protect your business. Key investors, customers, and strategic partners can all be scared away if they suspect your business is targeted for patent infringement lawsuits.

Good offense helps your patents survive litigation. Good defense helps your business avoid patent litigation. To help you win at the patent game, here are some keys to sharpen your offense and defense.

Offense
1) Don’t sit on the bench. You can file for a U.S. patent up to one year after your first offer to sell that invention. Many other countries have a rule of “absolute novelty” - you lose the right to seek foreign patent protection on the same day you publicly disclose your invention. When inventors try to perfect the details of a workable new technology, that delay often results in the loss of valuable patent protection on a broad general concept.

2) Draft a star. Seek a patent attorney with the legal skills to draft a “litigation quality patent.” This requires deep experience in both patent prosecution and litigation. In my personal experience, many patents that merely “get through the Patent Office” are found invalid under the intense scrutiny of litigation.

3) Protect your playbook. An appropriate patent application filed the day before that critical meeting can be a valuable insurance policy and might protect you in ways you do not expect.

Defense

1) Read the opponent before the play. Before you launch a product, find out if anyone might be able to sue you for patent infringement. A great place to start is by reading your competitor’s patents before they are targeted on your new product.

2) Change the play to take the advantage. If you find an issue early enough in your product cycle, you may be able to make a small change that avoids litigation.

3) Intercept the ball and let the defense rest. Turn the tables and send your competitor’s patent back to the patent office for detailed scrutiny. Although sophisticated legal work, this buys you time and can be far, far less expensive (and still more effective) than patent litigation.