SNAPSHOT PATENTING -- A PRACTICAL ALTERNATIVE TO PROTECTING INNOVATION, PART 2

by Michael Q. Lee and Michael V. Messinger

This two-part Advisor describes strategies for patenting inventions. In particular, this second article in the series addresses a basic but critical question about the process of patenting innovation: when should you begin the patent process for a given invention?

In last week's Advisor (see " Snapshot Patenting -- A Practical Alternative to Protecting Innovation, Part 1," 20 January 2004), we described the common "milestone" approach to patenting. This week, we discuss an alternative.

Snapshot Patenting

Snapshot patenting is an alternative approach to milestone patenting. Snapshot patenting is agile and more likely to direct company resources toward innovation of value. Like milestone patenting, however, snapshot patenting presents execution challenges requiring artful patent portfolio prosecution and management.

Snapshot patenting is time- (or interval-) based. According to snapshot patenting, a company files a series of patent applications during the life of a product. The filings begin early in the development process and continue throughout the commercial life of the product. The filings occur at regular intervals, such as every six months. Thus, the fundamental difference between snapshot and milestone patenting is that snapshot patenting is linked to a time interval (e.g., a patent application is filed every six months), whereas milestone patenting is linked to events (e.g., a patent application is filed at product release).

Under the snapshot approach, each application is a snapshot of the invention at the time the snapshot is taken. Applications prepared during early snapshots tend to be more global in nature, covering the high-level or "30,000 foot view" of the invention, where appropriate. Subsequent snapshot applications reflect changes in this high-level view of the invention, as well as focus on covering the improvements developed between intervals. For example, the snapshot application at interval In+1 would cover the technical improvements in the invention between snapshot intervals In+1 and In. Since they are focused on the technological deltas developed between intervals, snapshot patent applications tend to be lighter-weight than milestone patent applications.

The snapshot approach provides regular opportunities to bring a company's business and patent law expertise to bear on identifying and leveraging patentable innovation. This is often critical for software products and services. Many software-related patents are granted based on the innovation of a related business method, such as the Amazon 1-click patent, or a specific new functionality provided in a particular vertical market segment, such as, a user-interface feature applied to a new product. The snapshot approach enables forward-looking ideas to be captured in patent applications in a timely way, which is especially valuable for freedom-to-operate purposes, as well as in offensive patent strategies such as patent licensing or when the portfolio is being valued by investors or a potential acquiring company.

There are a number of different types of patent applications that can be used to implement the snapshot patenting strategy. These include provisional and nonprovisional applications, continuation applications, and continuation-in-part (CIP) applications. It will often be the case that different intervals will suggest the use of different application types, based on a number of factors including the technological overlap between intervals, the remaining lifetime of the product, the amount of resources available for the patenting process during a given interval, and so on.

The snapshot approach will result in earlier filing dates for some concepts, since the patent process starts earlier under the snapshot approach than the milestone approach. Filing earlier alleviates the statutory bar issue, at least for the concepts fully covered in those patent applications filed before any public disclosures or commercialization took place. The early filing dates obtained by starting the patent process earlier will also help down the road when you're having to address prior art given to you by the patent examiner or a third party, such as someone trying to invalidate your patent.

A disciplined commitment to the snapshot approach will result in a number of advantages. For example, the snapshot approach systematically provides a number of opportunities to capture and protect new innovation. If an improvement is developed between intervals In and In+1, then there will be an opportunity at interval In+1 to discuss whether the improvement should be covered in a new patent application.

Also, the snapshot approach potentially results in better patent claims and claim coverage, because the patent attorney and the inventors will have regular opportunities to adjust to changes in the industry, changes in company strategy, changes in competitor initiatives and products, changes in the law, and so on. In other words, the snapshot approach provides regular opportunities for the company's patent team to reassess what has been done to date, and to make appropriate course corrections in its patent strategy.

On the flipside, there is a potential downside to a company that adopts but does not follow through on the snapshot approach. If, for whatever reason, the company prematurely discontinues its efforts under the snapshot approach, then there is a risk that key technology will be left unprotected. Generally, such risk is magnified if the snapshot approach is discontinued early in the process (while major technical development is still occurring), and lessened if discontinued thereafter.

The snapshot approach has the potential of becoming a distraction to product development. This risk can be lessened by limiting the patent attorney's primary contact to only a small group of developers. Especially early on, the patent attorney might need to work only with the project leader or someone else with a good global understanding of the product.

Conclusion

Many of the benefits of snapshot patenting can be achieved via milestone patenting by careful selection of the milestone. For example, by setting the milestone to be "innovation breakthrough," one can address both the statutory bar and the new innovation issues. This assumes, however, that one can recognize when an innovation breakthrough occurs, and that one has the discipline to trigger the patent process upon such occurrence. The snapshot approach is advantageous in that it institutionalizes a systematic procedure to capture and protect innovation.

-- Michael Q. Lee and Michael V. Messinger