Maximizing Patent Value by Effective Prosecution
PLI Advanced Patent Prosecution Workshop, July 26-27 2010, New York, PLI Handbook Series
79 Pages Posted: 19 Dec 2019
Date Written: July 26, 2010
How does your client realize value from a patent? There are only three ways --
• Litigate: to collect money damages, or obtain an injunction to exclude a competitor
• Fear of litigation: Frighten a competitor remains out of the market, preserving your client’s higher margins, or license the patent for royalties. These depend on convincing the competitor that it’s better to conduct his business on your client’s terms than to litigate.
• Attract investment capital: which in turn means convincing an investor that competitors will have a credible fear of the patent
All value of a patent flows from its strength in litigation. The best patent is one that, evaluated as if it were to be litigated, appears to be valid and infringed so that no litigation is necessary. As Sun Tsu noted in The Art of War:
No nation has ever benefited from protracted warfare. Therefore, to gain a hundred victories in a hundred battles is not the highest excellence; to subjugate the enemy's army without doing battle is the highest of excellence.
To create value for your client you must assume that every application will be litigated. The value of your ex parte prosecution before a non-lawyer examiner will be tested by the standards of an inter partes litigation or negotiation against a lawyer adversary
The value of a patent is measured solely by these objectives. A good patent is a patent that scares a competitor out of doing something he wants to do. Your patent should be so compelling that a competitor has to run his business on YOUR terms.
How do we do that?
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