What is your approach to sourcing valuable inventions and why is dedicated invention harvesting in cutting-edge technologies so challenging?
Most valuable inventions target a market-related need rather than a specific technology problem – this is the essential observation that we have made in the course of more than 10 years of invention-harvesting activities in various fields of technology.
A market need is most often the catalyst that initiates the emerging technology stage of a technology’s lifecycle. In the emerging technology stage, there is plenty of room for valuable inventions and less IP competition, so most valuable IP assets can be secured for a reasonable cost. Nevertheless, early investment in emerging technologies is risky.
The following growth technology stage is usually initiated by early technology adopters. The number of inventions is continuously increasing, while the inventions themselves are becoming technology-centric and incremental, reflecting the incremental refinement of the technology platform established in the emerging technology stage. Most inventions are generated in the growth technology stage, mostly as a by-product of the technology development.
In the technology maturity stage, the number of inventions falls, while IP costs are essentially driven by maintenance and disputes. Clearly, this late stage is not the best place for developing valuable IP assets.
In order to generate the most valuable IP assets, invention harvesting should take place in the early technology stages, preferably beginning in the late emerging stage, where the technology foundation serving as the platform for further technology development has already been provided.
Consequently, PATENTSHIP’s invention harvesting approach is based on identifying a market need first. However, this alone neither defines a technical problem that can be solved by engineers nor forms a technical invention that is patentable. Experience tells us that patent claims (unnecessarily) claiming market-related solutions, such as business methods, tend to fail.
In order to source a patentable technical invention starting from the market need, the market need must be translated into a technical problem, as engineers are educated and trained in solving technical problems rather than in solving market-related problems. Fortunately, a technical solution to a technical problem that is associated with a market need forms a technical invention that may satisfy the patentability requirements of patent offices as well.
Finally, the technical invention must be transformed into an IP asset. Clearly, this cannot be achieved without an appropriate interaction with a patent office – and, frankly, they call the shots. In other words, valuable IP assets can be generated more efficiently if a patent attorney adopts the patent practices deployed by a particular patent office and reacts adequately.
What are the key skills that you need to achieve excellence for your clients in the patent sphere?
Apart from professional excellence, a patent attorney must understand the applicant’s situation and its market position on the value chain. In order to support their clients with sourcing valuable inventions, the patent attorney should be innovative and have an entrepreneurial spirit as well. Finally, in order to obtain valuable IP assets at a reasonable cost in reasonable time, a patent attorney should acknowledge that patent prosecution at the patent offices is a people business.
What advice do you have for an inventor trying to prosecute patent applications cost-effectively?
The foundations of valuable IP assets are laid with the drafting of a sustainable patent application, and patent drafting is a skill that takes years to master. The applicant’s emphasis should therefore be on drafting the best possible application in order to avoid costly prosecution of poorly drafted patent applications. Last but not least, the patent application should be prosecuted in such a way that there is clarity about the outcome of the prosecution, preferably after receiving a second reply from the examining division. This can often be achieved by working with, and not against, the responsible patent examiner.
Robert Klinski is a German and European patent, trademark and design attorney, and the founder of PATENTSHIP. He studied electrical engineering and telecommunications at the Technical University Hamburg-Harburg and received his PhD with honours from the Technical University of Munich. Dr Klinski has been working in intellectual property since 2002 and has extensive experience in IP prosecution, litigation, harvesting and exploitation in the fields of digital signal processing, 5G, the Internet of Things, AI, blockchain and cryptography. In his recent 5G and security projects, he has supported clients with harvesting more than 100 inventions. Dr Klinski actively supports international investment firms in IP-backed start-up incubation and IP generation on demand.
Click here to see his IAM 300 2020 profile.