Tails and Dogs

Companies with exciting innovations often bring in a patent attorney, show the attorney their research, and ask ‘what can we patent?’

This is a question that comes from all sorts of clients, both the sophisticated huge corporations and the small aspiring companies. For a naive or self-interested patent attorney, the answer to ‘what can we patent?’ often will be ‘all of it.’ A better response may be more questions.

The problem with beginning with the question of ‘what can we patent?’ is not that the question is unreasonable - after all, the patent attorney was brought in to figure out what was patentable - but that the question comes at the patent process from the wrong end. The ‘what can we patent?’ question is the patent tail wagging the business dog.

To be sure, a patent attorney can help identify the parts of a project that cannot be patented, but after the clearly unpatentable aspects of a project have been winnowed out, the remaining parts of the project should be examined based on the question of ‘what would be helpful to try to patent?’

‘Try’ should be emphasized, not only because not all patent applications are allowed but because sometimes the upside value of a particular invention justifies filing an application even knowing that the application’s chance of allowance is not great. In the face of uncertainty about the future marketplace and the success of a patent application, concepts like expected value, and other metrics that scare the daylights out of many attorneys, should be considered.

Very rarely can a patent attorney make good on a plan to patent ‘all of it.’ Even if a patent attorney can patent ‘all of it,’ or at least file a bunch of patent applications, maximizing the value of those patent applications requires an understanding of how they can actually provide value to the business. Filing the right patent applications requires starting with the business dog, rather than the patent tail.