The Art of Smart Patent Filing – Strategies Inspired from Sun Tzu
Stephen King once said, “Good books don’t give up all their secrets at once.” Some books are written in such a way that the more times you read them, the more secrets you uncover.
One of those books is Art of war by Sun Tzu. The one size fits all book. Every time you read it, you realize how close it is related to the field you are working in.
Art of War’s original manuscript, Sunzi bingfa, was written over 2000 years ago in Mandarin. Since then, it has been translated into multiple languages and used in innumerable contexts.
Various articles and plenty of books – from dating to religious mythology, for writers to salespersons – have applied Sun Tzu’s strategies in the context of their respective fields. Unsurprisingly, the strategies covered in the manuscript could also be applied to the field of Intellectual property.
Art of War & Patent Strategy
Constructing the IP Strategy for a company is much akin to bracing oneself for a war. An ill-thought plan, a series of wrong moves, some mindless decisions, and Boom! You might lose to your enemy at any moment.
It is very important to craft a well-planned IP strategy for your organization, and among copyrights, patents, and trademarks, patents are the most important intangible assets. Hence, it becomes necessary to craft a well-planned “patent strategy” for your business.
Before we go ahead with explaining what patent strategy is and disclose a few patent strategies in the context of Sun Tzu, listed below is the table of content for this strategy guide. Suit yourself if you already know what patent strategy is and want to get your hands on some valuable patent filing strategies without losing any more time.
What exactly is a patent strategy?
A patent strategy could be defined as “establishing a plan of action in order to use the patents granted, for generating revenue by licensing or selling the patent rights; and protecting the products/process of the company from being used by competitors by having a broad range of patent protection.
Patent strategy, in essence, is a list of strategies, patent owners could use to make the best out of their patents. There are a lot of strategies that are common knowledge, while others which few know about. We thought what could be a better way than revealing these well-known and less-known strategies to the world in the context of the Art of War. Interesting idea, right?
So here’s Patenting 101- Lessons from Sun Tzu’s Art of War
In the very beginning of the book, Mr. Tzu makes one point clear through the following quote. It is important to have a plan of action while implementing your patent strategy.
The general who wins a battle makes many calculations in his temple before the battle is fought. The general who loses a battle makes but few calculations beforehand. Thus do many calculations lead to victory, and few calculations to defeat: how much more no calculation at all! It is by attention to this point that I can foresee who is likely to win or lose.
Companies without a patent strategy lose to their competitors that have a strong patent strategy in place. For instance, companies like IBM, Apple, Google, and Microsoft have a well-planned strategy imbibed in their business that helps them emerge as winners during patent wars.
The formation of a successful patent strategy requires considering two different phases during the whole lifecycle of a patent- patent filing and maintenance. If planned strategically, every phase can lead to generating an overall winning patent strategy.
Patent Filing Strategies
All that begins well ends well. Patent filing is one of the most important phases which if implemented strategically can help you emerge as a winner in your overall business strategy against your competitors. You might ask, I have some inventions and am thinking of patenting them. What’s the strategy part in here?
The strategy part is how you patent your invention. Are you protecting your inventions by narrow claims? Do you understand the value of the invention in the field? Do your inventions cover all claims that could prevent any competitors from getting around your product?
It all comes down to choosing between two strategies – Offensive or Defensive.
Security against defeat implies defensive tactics; ability to defeat the enemy means taking the offensive.
Mr. Tzu explained the concept pretty well, so let’s dive right in and explore all kinds of offensive and defensive tactics that you can implement in your business strategy.
Offensive Patent Strategies
Though highly unethical, offensive strategies are some of the best strategies to get a hold on the market, while deterring the competitors from entering or getting a share of the competitor’s market segment itself. After all, all is fair in love and war. And business is a war.
Standing on the defensive indicates insufficient strength; Attacking, a superabundance of strength.
Have you ever passed through a toll gate on your way somewhere? A barrier across a road where you must pay the toll to go further. I’m sure you would have crossed multiple tollgates and paid for using the services too. The toll collectors built the highway, tunnel, or bridge that makes our lives easier in some way or other. So there’s nothing wrong if they are asking for a charge. Right?
How about implementing the same strategy in your business? Some companies do a great job of innovating and exploring technologies unheard of. Consider the case of big data, IoT, Smart wearables, AR, VR- technologies that were unheard of years ago and in a small period became an important part of our day-to-day life.
Attack him where he is unprepared, appear where you are not expected.
Companies like IBM that invested heavily in the R&D of Big Data, are reaping the fruit of the seeds sown years ago. With a huge patent portfolio, any company that wants to innovate in big data technology has to check IBM’s patent portfolio to ensure it isn’t infringing on any of IBM’s patents. Moreover, if they want to license those patents, the conversation is always between the client and IBM’s licensing department.
Getting to the point, if your company innovates in an area unheard of, lacking a lot of competition, but has immense potential and you have a huge pocket to rely on, then why not patent the entire technological area with the help of your R&D team?
Developments, continuations, and even the broadest areas could be covered in the technology by patenting the same.
In that way, you can develop a tollgate over the technology where everyone has to pay a licensing fee to work in the field. Though the results take time, once it starts, the ROI is immense.
Picket fence strategy
Have you ever seen a picket fence and wondered how it adds to the beauty of the house. Those clean white fences or those oddly wired meshes that would prevent anyone from entering your territory. Wonderful things, aren’t they?
So is the next strategy. In the picket fence strategy, all you do is: patent your core invention, build a set of patents around it that can leave no space for even the narrowest claims, and then you place thickets around it by filing continuation patents that cover the scope of the invention on whole.
But that’s a defensive strategy, how is it classified under offensive strategies?
Wait a minute. The offensive part is when you do the same except for the first step. Here, you design around your competitor’s core patent and then place fences and thickets all around your patent that would suffocate your competitor’s patent.
Ever heard of a Chakravyuha? It is a defensive formation that is formed around your competitor that could defeat the cleverest of the clever. Adopting such a patent strategy in your business is a definite win for you, provided it is executed carefully.
Pro Tip: Never leave even the narrowest claim that could affect your game in the long-run.
Stealth counter-attack strategy
In the stealth counter-attack strategy, if a competitor’s patents are preventing you from venturing into a technological area, conduct a validity search to find prior art. The goal is to invalidate the patents by scrutinizing the fallacies in the competitors’ IP. This will get the path clear to go ahead with the invention.
To fight and conquer in all your battles is not supreme excellence; supreme excellence consists in breaking the enemy’s resistance without fighting.
Bargaining chip strategy
Every time someone mentions chips, I imagine casinos. A beautiful place with hundreds of people, dozens of dealers, gaming machines and millions of dollars at stake. Only the lucky one wins.
The clever combatant looks to the effect of combined energy, and does not require too much from individuals. Hence his ability to pick out the right men and utilize combined energy. By holding out advantages to him, he can cause the enemy to approach of his own accord.
Back to patents, in the bargaining chip strategy, patents from your portfolio are used as chips to resolve issues when a patent of both the companies are infringed. If a product is made up of n different pieces where n-1 products are unique, but 1 piece is patented by a competitor and the same is the case with your competitor’s products; both the companies can use the patents from its portfolios as bargaining chips and get a license for the technologies covered without any lawsuit for infringement.
By holding out advantages to him, he can cause the enemy to approach of his own accord; or, by inflicting damage, he can make it impossible for the enemy to draw near- Sun Tzu
For instance, Apple and Samsung made great use of this strategy at the end of the long-prevailing patent war resulting in a decrease of $150 million to be paid in royalties by Samsung resulting in Samsung ending up paying $929 million instead of 1.5 billion dollars ruled by the jury.
Defensive Patent Strategies
In a defensive strategy, Patents are accumulated in order to avoid being sued by the competitors and avoid infringement. It is made sure that every aspect of the invention is protected and continuation patents are filed if needed to cover any further improvements made in the invention. The goal is to file patents in a manner to avoid any kind of litigation from anyone in the field.
Though tollgate and picket fence strategies are offensive to a certain extent, the defensive version also exists for the same. By targeting areas that have weak IP, an effective tollgate strategy can be built to safeguard the innovation in the technology. Here the focus is to protect the innovation of your company instead of conquering the entire technology.
Design Around strategy
This strategy is long followed by many corporations as both offensive and defensive move. Companies design their products without infringing any patents of their competitors having identical products in the market. This gives them multiple benefits including avoiding licensing costs and also limiting the scope of the competitor’s patent.
For instance, consider the case of Cheryl International, a Chinese car manufacturing company that designed its Chery QQ model in such a way that it avoided infringement of any of General Motors’ patents of the Matiz version of the car.
If the enemy is secure at all points, be prepared for him.
Almost the whole mini car design was copied by the Chinese company except the areas that were patented by General Motors. In the end, the case settled with Cheryl promising not to market its cars under the same brand in the United States but was free to sell the cars in Latin America and China. That’s a win-win for both the companies and Cheryl got away with it.
You can do similar things with your patents i.e. designing around your own products to make sure no one else does. This gives you defensive benefits and helps you secure the areas where your competitors might have penetrated your product otherwise.
But, what if your competitors have done this before you? How will you find and prove that a product is infringing your patents if it was designed around? Worry no more! We have a solution for that too. Design around strategy can be defeated and you can easily prove infringement by taking simple steps listed here: How to Defeat a Design Around, Prove Infringement, And Increase Value of a Patent
Forming Patent Pools
There is a reason why collaboration comes before a competition in a dictionary. Sometimes it’s easier to shake hands and wave a white flag instead of bracing up for a war. In the world of IP, where companies have massive patent portfolios with a large bank balance to back them, only attorneys and paralegals emerge as winners. Both the victorious and defeated companies are at the losing end because a huge amount of money and time gets wasted in the entire process. That time and money could have been spent on something useful, like R&D.
Forming patent pools is one of the best defensive strategies of all time. And no one loses in it. Initiated in 1856, the first successful patent pool was formed in the area of sewing machines between four companies and one individual.
Since then, companies with multiple patents on a technology form patent pools and license their patents to each other. This bolsters innovation and is a great practice to keep up the good spirit in technological domains.
Technologies like MPEG-2, MPEG-4, H.264, and DVD6C are a result of patent pools formed between multiple organizations. With multiple companies collaborating for technology under the same umbrella, most of the technologies end up becoming IEEE standards. In a patent pool, everybody involved emerges as a winner. A win-win strategy for everyone.
We can form a single united body, while the enemy must split up into fractions. Hence there will be a whole pitted against separate parts of a whole, which means that we shall be many to the enemy’s few.
Watch out for the next chapter on lessons from Sun Tzu where we explore litigation and the best ways to deal with it. We are also giving these articles a shape of a book. We are letting our email subscribers a peek into it before anyone else. Are you on that special list? No? Well, you can join in from here – Click here to subscribe.
Though it is important to have a well-planned patent strategy in place, if you didn’t have it till date, there is still nothing to lose. That’s the only difference between business and war – Better Late than Never.
Authored By – Anjali Chopra, Research Analyst.
P.S. We know it sometimes becomes difficult to remember all the information as we are living in an information-overload age. Having that thought in mind, we put together these smart patent strategies in an infographic below.
Enjoy it and feel free to share with others.