Innovation often happens out of sight. Whether in the labs of a multinational corporation or in an inventor’s garage, it can be an insular process, the focus usually on the invention itself. It’s a tiring, trying, rewarding and all-consuming endeavor to coax a new idea into reality. The prospect of possible litigation over the invention down the line is not usually front and center. But perhaps it should be at least in the peripheral field of view.
That’s not to say that innovators should be thinking about the courtroom from day one, but having an eye toward eventual patenting, licensing, and even potential litigation can help build better patents and a smarter portfolio. Too many organizations see three distinct IP functions after invention: prosecution, licensing, and litigation. That’s precisely the wrong approach, according to litigator Gary Sorden, an IP Member and lead IP counsel at Cole Schotz in Dallas, because it precludes the collaboration that facilitates better long-term results.
“That three-headed silo approach has a high degree of failure,” he says. “If you’re coordinated and have honest communication about any weaknesses, those weaknesses can be addressed through prosecution, different licensing techniques, or even different litigation techniques.”
Innovators should be thinking about the full lifecycle of the invention before filing, he says, including the possibility of eventual conflict.
A Bigger Picture
This thought process is not just about patents. All forms of IP should be considered, including copyright, trade dress, or even a trade secret approach, to create a broad picture of how the innovation can be best marketed and monetized.
“First and foremost, focus on what you will do to be different, what your technology does that is not in the marketplace today,” Sorden says. “Then you have to ask yourself as you move through that pre-patenting phase, ‘What do I need to preclude others to be able to do if I want to live in that space?’”
He uses the analogy of real estate to express the calculus applied to an innovation. Determining whether you intend to stake out an acre, 100 acres, or an entire state informs strategy and feeds into how you shape the patent itself. Many limitations apply. Sometimes the market is well developed, or the technology has been patented by numerous others. Assessing the anticipated future application of the technology, not just current landscape, is important. And of course, budget is always a consideration.
Moving into the patent prosecution phase, companies too often focus only on the discrete innovation, not on this bigger picture. A broader view takes into account a list of questions.
“If you have an aspect of innovation you think is really special, what can it be combined with? What services could you attach to it? How can you evolve that into your business plan going forward?” he says.
Getting this right is not easy, but it’s critical to avoiding litigation, or winning, should it ever arise. Mistakes made before filing can hamper both assertion and defense, or block the full realization of a patent’s potential. “Once you’ve filed a patent,” Sorden emphasizes, “you’ve set your date.” A litigator’s collaboration early on can be pivotal to avoid locking a patent into a less than optimal position.
“Almost every patent I see when I get a new portfolio, even a portfolio geared toward litigation, I think gee, I wish I could change this one word,” he says. “I wish we could hone in more on this and provide more detail because it would help us on our validity argument or on an infringement. There’s always something.”
The key to getting it right, he says, is to take your time.
“You have to ask yourself as you move through that pre-patenting phase, ‘What do I need to preclude others to be able to do if I want to live in that space?’”
Member
Cole Schotz PC
Speed Kills Patents
In the frenetic race to innovate, it’s counterintuitive that slowing down early provides the strongest patent later. But too much haste leads to mistakes and can paint patent owners into a corner.
“It’s almost like farming,” Sorden says. “If I plant a seed one day, I’m not picking the fruit the next day. But you can grow that fruit if you’re patient, have a strategy, and execute through your prosecution. It can keep your litigation costs down and increases your chances of overall success.”
That can be tough. Patent management — whether filing, acquisition, or litigation — is often reflexive. A new competitor enters the space and companies race to sue, or to file or acquire more patents that are focused on current products and market conditions. A more patient approach can yield better results, and cost less.
“Speed in this case often is where mistakes are made because you haven’t thought about the competitor’s product, and what other patents you have that might apply,” Sorden says. “That rush to filing is usually the largest mistake I’ve seen.”
Moving too quickly is not only a danger in the pre-filing stage, it affects litigators just as much.
“One of the pitfalls of litigation is the rush to find a case without looking into the totality of your patent portfolio. Not having the good innovation story — why did you come up with this idea? — is the issue,” Sorden says. “If you rush to file a case, you’re only inviting more problems. Oftentimes it’s the planning before the lawsuit that equals success. It doesn’t mean you can’t be a company that creates something new that it doesn’t do. It’s just to make sure there’s a really tight explanation of how this patent and this invention came to be.”
Mistakes made before filing can hamper both assertion and defense, or block the full realization of a patent’s potential.
Arm-in-Arm
In the end, patent prosecution, like monetization and trials, takes forward thinking. Patience is key throughout, because litigation is an end game — the sum of all the decisions that came before.
“When there are 30 attorneys looking at your patents, you’d be surprised how many things they can think about,” Sorden says. “It takes the cooperation of outside counsel, in-house counsel, funding, private equity, and other stakeholders to ensure we think about how to do this as the sands are shifting underneath our feet. That is something we always understand as litigators.”
Fortunately, that type of collaboration is increasingly common. The growing cost of litigation, the growing length of time to get to trial, and the growing size of verdicts all fuel a new impetus to do things in a different, more coordinated way. In past years patent owners could get away with traditional divisions of responsibility and not always have it come back to haunt them. Going forward all parties need to be arm-in-arm from the start.
“It has to be that way,” Sorden concludes. “If you’re a patent owner, it’s a concerted effort. What is the plan? What can go wrong? How can we address it? If you get that right, and we end up litigating, the plan’s already in place to mitigate risk.” 
