Wednesday, May 13, 2009

Want to Obtain Patents to Protect You from Competitors Knocking Off Your Innovative Products or Technology? It's Easy-Don't Be "Selfish"

Recently the CEO of a start-up asked me for the most important advice I could give before she filed a patent application directed toward protecting her company's core technology. In response, I said "don't be a selfish patent applicant." Few patent applicants obtain such counsel from their advisers and it shows: the vast majority of patents are written from a selfish perspective.
(Note that I am using "selfish," in the context that the term is used in marketing i.e., thinking that others see the same things in your product or technology as you do. When one selfishly markets her product or technology, she assumes that others will buy it for the benefits she sees, not for the reasons upon which consumers will base their purchasing decisions. So when I say that most patents are written "selfishly," I mean that applicants (both individual and corporate inventors alike) approach the patenting process with a focus on what they think are the important aspects of the product or technology, as opposed to what others will find innovative.)

A focus on the invention itself while drafting a patent application often means that the innovation is not adequately covered to prevent knock-offs by competitors. By "innovation," I mean the technological or consumer problem that is solved by the invention which is why someone actually buys the product or technology embodied by the invention in the first place. When such an innovative product or technology becomes successful in the marketplace, a competitor will certainly seek to copy those features that make it "innovative." But if the patent fails to properly cover the innovation, a competitor can mirror the successful product or technology with little fear of liability because the same problem can be solved using different design features than those set forth in the patent.

The key to preventing knock-offs of innovative products or ideas is for those responsible for drafting patent applications to look outside the perceived inventive aspects of a new product or technology to examine how others would view the problem addressed by the new product or technology. Put simply, the patent application drafting process must include an "unselfish" analysis of how others might try to solve the same problem to which the innovative product is addressed.

A good illustration of my premise here is the touchless towel dispensers that are now ubiquitous in public restrooms. These dispensers provide a towel to a user without her having to touch the dispenser. This enables a more hygienic experience for the user and also significantly reduces the amount of towel material used. The number of touchless dispensers in use today means that this product solved a significant market need. However, if one examines these products closely, she will notice that there are now several different manufacturers of these products in addition to the original innovator Georgia-Pacific ("G-P"), which introduced its EnMotion(R) dispenser several years ago. (Full disclosure: I was employed in the patent department of G-P, but I was not involved or knowledgeable of any business or legal decisions regarding the EnMotion towel dispenser product.)

A Google search for "touchless towel dispensers" indicates that there are at least 6 different manufacturers of these products for use in commercial restrooms. Each of the non-G-P dispensers appear to work using slightly different design features than the EnMotion branded dispenser. For example, one non-G-P touchless dispenser presents a towel to the next user upon tearing of a towel. This feature apparently gets around the G-P product's function to dispense a towel to the user when waving her hand in front of a sensor. Another competitive version requires the user to put her hand below the dispenser to activate a sensor instead of in front to obtain the towel for use. Presumably, the consumer does not care how she gets her towel dispensed from a touchless dispenser--that is, each of these 6 manufacturers of touchless dispenser provides the same consumer innovation, albeit using slightly different designs.

The question is why G-P's patent filing efforts relating to its touchless towel dispenser product (which were extensive) do not appear adequate to prevent these multiple competitors from copying its innovation. My answer to this is that it is likely that those responsible for identifying the inventive aspects of the G-P touchless dispenser prepared the patent filings from the context of what they invented, not what problem the product solved for the user. In other words, G-P's representatives selfishly patented the towel dispenser.

This is not to say that G-P's representatives did a bad job covering the touchless towel dispenser invention. Those responsible for G-P's patenting efforts competently drafted the applications with an eye toward how others would copy their invention--that is, what aspects of their fully-formed product could be knocked-off by others for inclusion in a competitive product. Certainly, the G-P patents cover the G-P invention very well, which can be inferred from the fact that none of the competitive products appear to mirror the specific operational features of the G-P touchless towel dispenser. Because of this patent coverage, the competitive towel dispensers must accomplish the same innovation i.e., hygienic dispensing and waste-reduction of paper towels usage in public restrooms using designs that were presumably not considered to be part of the G-P inventive design.

How could G-P have reduced the amount of competition in touchless dispensers? The simple answer is by seeking to patent the innovation, not just the specific G-P touchless dispenser invention. The innovation of touchless dispensing is what the consumer cared about and this is what G-P's representatives should have endeavored to patent. This could have been accomplished by addressing the hygienic nature of the dispensing e.g., fewer germs after a number of uses or by identifying a reduction in the amount of paper used in a certain number of uses. In other words, to protect the G-P touchless dispenser innovation, G-P's representatives should have identified the functional benefits provided by the product because these functional features necessarily exist in knock-off products that solve the same consumer problem.

Of course, obtaining patent coverage that is broad enough to protect an innovation such as the G-P touchless dispenser is easier said than done. However, by drafting patent applications with an eye toward how others would attempt to copy the functional features of a new product or technology can put a patentee in the position of owning the innovation, instead of just one or more ways to address a technology or consumer problem. By approaching the patent drafting process from a "non-selfish" perspective, others will be less likely to knock-off the functionality that serves to solve the innovative problem.

2 comments:

FOARP said...

This may just be me being slow, but isn't the problem here that the patent attorney in question's drafting of the claims was insufficiently broad? From what you say I get the impression that they were simply playing stenographer for their clients instead of actually having a look at the invention themselves and trying to suss out what is really inventive about it.

Jackie Hutter, Intellectual Property and Patent Business Strategist and "Recovering Patent Lawyer" said...

Actually, the claims were really broad, as demonstrated by the fact that the competition had to redesign the product in order to get around the patents. The problem is that the people who understood the business aspects of the innovation did not participate in the patent preparation process. Put another way, those who prepared the patents understood the invention, but not how the market would react to the innovation when G-P's product became the "must have" product. If the market effect of the innovation had been a part of the patent drafting process, G-P might not be fighting for market share today.

 
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