28 min
Season 1, Episode 5: Designing Patent Applications for Allowance Winning with Patents (and IP)
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- Entrepreneurship
"Proper patent planning prevents piss poor patent performance." In other words, if you do the work on the front end, the outcome is virtually guaranteed. Patents are no different. This episode provides listeners with an overview of how my clients obtain broad, business relevant patent protection almost all the time that we work together to draft, file, and prosecute a patent application along with our outside counsel team. This almost 100% success rate for my clients is vastly different than the typical 5% or fewer of patents having strategic value. There are several necessary steps required to make this happen, and successful execution requires that both the business and IP teams to approach things differently than in conventional patent development efforts. The threshold requirement is that what is to be protected is an innovation--that is, the subject matter is for a solution to a customer problem, where the customer has been validated to exist. There are then 4 crucial elements to obtaining broad protection for the subject innovation: 1) identify the one or more customer value propositions that are relevant; 2) search for and characterize the prior art to identify a framework for protection; 3) create strategically relevant claims with "non-limiting" limitations; and 4) develop a strong and compelling story to support the fact that you are entitled to the broad claims that you seek in your application. As an added benefit, when one does the hard work up front, it is much less likely that the patent examiner will be able to reject your application multiple times, and your patent application will issue more quickly and at lower overall cost.
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Send in a voice message: https://podcasters.spotify.com/pod/show/jackie-hutter/message
"Proper patent planning prevents piss poor patent performance." In other words, if you do the work on the front end, the outcome is virtually guaranteed. Patents are no different. This episode provides listeners with an overview of how my clients obtain broad, business relevant patent protection almost all the time that we work together to draft, file, and prosecute a patent application along with our outside counsel team. This almost 100% success rate for my clients is vastly different than the typical 5% or fewer of patents having strategic value. There are several necessary steps required to make this happen, and successful execution requires that both the business and IP teams to approach things differently than in conventional patent development efforts. The threshold requirement is that what is to be protected is an innovation--that is, the subject matter is for a solution to a customer problem, where the customer has been validated to exist. There are then 4 crucial elements to obtaining broad protection for the subject innovation: 1) identify the one or more customer value propositions that are relevant; 2) search for and characterize the prior art to identify a framework for protection; 3) create strategically relevant claims with "non-limiting" limitations; and 4) develop a strong and compelling story to support the fact that you are entitled to the broad claims that you seek in your application. As an added benefit, when one does the hard work up front, it is much less likely that the patent examiner will be able to reject your application multiple times, and your patent application will issue more quickly and at lower overall cost.
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Send in a voice message: https://podcasters.spotify.com/pod/show/jackie-hutter/message
28 min