Measures to Copy Competitor’s Patent Claims

Thursday, May 10, 2018

Introduction:

Welcome to the inaugural issue of Brooks Kushman Analytics and AI Monthly.  In this planned ongoing publication, I will be discussing known and newly discovered opportunities to apply emerging technological tools to current intellectual property paradigms.  In an open-ended series of articles, I will provide insight on how to build stronger portfolios and litigation cases, find targets and pursue them to maximum effect, and to better defend against enforcing entities.  As my understanding of the opportunities provided by analytics, AI and IP law grows, I will share that understanding with you, and we can explore the impact that big data and analytics will have on the practice of IP law together.

These articles will each focus on a model made possible through the application of emerging technology to the practice of IP law.  Many of our data points are drawn from AcclaimIP ®, and we have recently been exploring some complementary tools as well, such as Cipher ®, which will play a role in some future models.

To begin, I will attempt to model concepts using the following vocabulary:

Facts – these are things we can know using AcclaimIP (or other similar tools).   These should represent irrefutable data points, they are reflective of things that have already happened and which exist on record.  As a group they are sound, but remember that a given instance can be subject to user or technological error (e.g., a missing record or mislabeled item).  An example of a Fact is that your patent or published application has been used as 102 prior art.

Opportunities – these are models supported by Facts.  The utility of these models is debatable, and many come with caveats.  We may not have fully discovered or realized every potential caveat for a given opportunity, so please do not treat an Opportunity as a Fact.  An example of an Opportunity is that you could use the Fact of the 102 rejection described above as a preliminary basis for copying the rejected claims.  This presupposes that the Examiner is correct and that your application provides support for the copied claim(s), but that is something that can be resolved through Inquiry.

Inquiries – these are actions that we think should be undertaken based on Facts and in support of Opportunities.  I will not necessarily set forth an exhaustive list of Inquiries required or recommended for each Opportunity, but rather will lay out some primary, recommended Inquiries and provide some reasoning in the analysis that follows.  If later practical application or reader insight reveals additional important Inquiries, I will supplement articles in future volumes.  An example of an Inquiry would be that we recommend checking for support before using the Fact of the 102 rejection to file a copy of rejected claims in accordance with the Opportunity.

 

VOL. I – Copying Your Competitor’s Patent Claims

While many of the concepts we discuss will require some deeper understanding of both law and analytics, this concept is fairly straightforward, and it is exactly what it sounds like.  The essential premise is this – you take the Fact of a 102 rejection using your art against a competitor’s patent as indicative of an Opportunity to file an exact copy of your competitor’s claims.

1. The Formula

Fact –

Your case was used in a 102 rejection.

Inquiries

Does the case that was used in the 102 rejection have an open family member or is it within 2 years of issuance?

Would the copied claim be detectable, likely infringed, and/or otherwise desirable to own?

Is there actually full support in your specification?

Is the priority nature of your filing accurate?

Will filing a claim copy trigger an interference?

Will (and if so, when will) my competitor find out that I have copied its claims?

If my competitor finds out, will that create a dangerous or undesirable situation?

Opportunity –

              File an exact copy of detectable, likely infringed or otherwise desirable claims, amending only as needed based on support issues, and broadening amended terms whenever possible, unless that will unreasonably expand the scope of potential prior art.

The broader Opportunity here is to tap your existing (and potentially massive) portfolio in a cost-controlled, highly efficient manner to produce IP assets of quantifiable value.

2. In Practice 

There are some obvious reasons why one would want a copy of competitor claims, not the least of which is the chance to block, license or sue the competitor.  This Opportunity can be used to improve negotiation positions, gain a foothold in a new technological area, reverse a cross-license, and defend against a zealous enforcer among other things.  Assuming that you have copied competitor claims that correlate to real competitor products, it is easy to see the damage that you can do with such claims.

While this procedure and concept could have been done for a number of years, by cobbling together information available from multiple sources, current analytics tools make finding the Facts and evaluating the Inquiries a matter of hours, if not minutes.  The facts of the 102 rejections can be literally discovered in minutes, as can the reduction to cases which have open family members or grants less than two years old.

There may be additional time involved in the deeper analysis for support and desirability.  Because Examiners have some latitude in interpretation that do not necessarily flow down to Applicants, and because Examiners have, on occasion, made mistakes, I recommend making the support inquiry.  The Office Action (which in AcclaimIP is a single mouse-click away) provides a nice guide for a jumping off point.  It is worth noting that there are no guarantees that you are first to invent, so some discretion may be required to determine if you are likely the primogenitor of the concept, or merely a reference the Examiner selected from a slew of opportunities.

Certain instances of copying may also result in interferences.  Having no practical knowledge of interferences, other than a two-credit law school class, I cannot supportedly opine on whether you want to engage in an interference or not.  I can say anecdotally, however, that this is something that most practitioners seem to eschew. It is probably reasonable to suggest that only for a case of significant, demonstrable value, would such a likely time-consuming and expensive procedure be recommended.  All that said, as long as your competitor has a post-AIA filing date (March 16, 2013), first-to-file should inure to your benefit.

The question about your competitor’s awareness of your actions may be more difficult to answer.  As a general matter, if the competitor case is still in prosecution, and if those claims still resemble the claims you copied, I would expect that virtually any Examiner would immediately begin citing your continuation claims as at least a 103 primary reference.  This would give at least some form of immediate notice of your filling. On the other hand, if your competitor’s case has been issued, abandoned or significantly amended, you may be able to escape discovery until you have secured the patent.  Again, the tool we use, AcclaimIP, will provide you with immediate, up-to-date information about the status of the case which you are copying, efficiently taking at least some of the guess-work out of this process.

If your actions are discovered, your competitor can respond in-kind, or by using other resources (existing patents, deeper pockets, etc.) to put some pressure on your company.  The likely level of reaction and the danger it poses to your company are for you to evaluate, I just want you to be aware that there are opportunities to discover when claim-copying is occurring.  Tools like AcclaimIP even make it possible to track all 102 rejections issued against your corporate portfolio, and to thereby see any subsequent actions taken on behalf of the entities owning the prior art.  Such inquiries, while rare now, may become a matter of more common course as companies begin to pursue claim copying Opportunities.  Such tracking may also be best left to outside counsel, to avoid undue in-house “notice” of every potentially dangerous patent.

While the above described Fact-finding and Opportunity-identification can be done at any time, there is value in regular inquiry.  There are also some important trigger points at which the Fact-finding is highly recommended.

Because Office Actions issue on a daily basis, regular inquiry will keep you apprised of all Opportunities as they present themselves.  This can aid in both shaping legal strategy and budget management. As a pure Fact-finding (i.e., “were we used in any 102s this week/month/quarter?”) process the search takes mere minutes to complete and can easily become part of your regular practice.

The trigger points are critical points in the life of an application, typically before issuance or abandonment, at which Opportunity should be seized lest it be lost.  It is important that you not simply look at an application and say “we have claimed everything of value” or “there is nothing here of value left to continue the fight,” without running at least the 102 rejection search.  When viewed through the lens of an Examiner as applied to a competitor’s filing, there may be countless interpretations of your language and concepts embodied in your application.  Once you have abandoned the application or paid the issue fee, the possibility of successfully pursuing these Opportunities becomes significantly diminished at best.

All-in-all, this Opportunity provides in-house counsel with the means to evaluate, manage and monetize existing portfolios.  This can be done in a targeted and efficient manner, turning a previously Herculean and expensive task into a fairly mundane and cost-effective one.  And since your company spent all that time, money and effort into obtaining the portfolio, isn’t it about time you began getting some return on that investment? As Sun Tzu put it, “opportunities multiply as they are seized”–there is no time like the present to being following this sage advice.

 

CONCLUSION

I hope this initial exploration into analytics and IP law has left you both excited for this Opportunity and hungry for more.  At Brooks Kushman, we have formulated a number of potential models supported by analytics, representing a wide range of Opportunities for improving IP practice and portfolio value.  Those will form the initial foundation of these articles, and as the tools and our understanding of them continually improve, I anticipate many more Opportunities will emerge.  I am confident that analytics will have an increasing impact on the practice of IP law, and I am pleased that you have chosen to join me at the forefront of understanding how this will happen.