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  Intellectual Property Issues for High Tech Companies
Vol 3 Issue 7 July/August 2003

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Make mine the base model

Tip of the Month

IP Links of Interest

On-Line Patent Glossary

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  Welcome!!
Directions is a newsletter from TechRoadmap Inc. discussing intellectual property issues and ideas. We hope to stimulate you to examine and improve your own IP practices. (You can change your subscription options with the link at the bottom of the page)

Inventions are like new cars. They come in stripped down, base models as well as the more desirable, option-laden, Super Grande Tourisimo version. Unfortunately, some inventors fall in love with the upscale model and forget that the base model can get their competitor to market just as nicely, thank you very much. Avoid this pitfall by reading "Make mine the base model".
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  • Make mine the base model
  You walk into the new car showroom, Consumer Reports car buying issue in hand, a firm idea of what you are willing to spend on a car, and - BAM - the next thing you know you are talking to a salesman about which option package includes BOTH the sunroof AND the deep luster premium clear coat paint job. What happened? - you fell in love with the car. The same thing can happen to an inventor, with a serious impact on the claim protection in his or her patent. To avoid this pitfall.....read on...

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  • Tip of the Month
 
When buying a car - or filing a patent application - sit down and make a list with three columns:
  • Base Model - This column contains all the features your invention MUST have in order to operate. It may not operate nearly as well as your best or preferred version, but with this minimum set of features it will operate. If you can keep others from building this model, they will not be able to compete with you. This column will probably become your first independent claim. Here we're talking engine, transmission, and steering functions.

  • Preferred Option Package - This column contains the features of your invention that make it perform to its highest potential. These are the features that you don't want anyone else to patent and keep you from including in your product. This column will probably become dependent claims. Consider having overdrive in your transmission.

  • Options you'll take if they happen to be on-the- lot - This column contains features that improve the overall invention but are not really integral to its function. This column might not make it into any claims - perhaps just part of a preferred embodiment. For example, the CD changer really doesn't have anything to do with how well the car runs.
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  • IP Links of Interest
  US Patent office - Searchable database of all US Patents and, now, published patent applications.
The Patent Cafe - an on-line source of interesting insights into current IP issues.
EKMS Inc. - a company with whom we've worked that provides a range of IP management services including portfolio analysis, deal-making, and process improvement.

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  • On-Line Patent Glossary
  Industry's Best Glossary
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  • Make mine the base model - continued
When you have invested long hours developing your invention it is only natural for you to fall in love. You love all the neat features you have built into your invention, the sales and marketing folks are stoking your ego by telling you how the clients are going to jump out of their seats when they see the display you designed, and your co-workers tell you how elegant your solution is. Unfortunately, your patent attorney should put a damper on your enthusiasm. It's not that attorneys are party poopers, it's just that he or she wants you to avoid "new car syndrome".

New car syndrome is the well know effect of being wowed in the showroom and ending up losing sight of your new car purchase goals. When I walk into the showroom my avowed intent is to buy "transportation", something that is easily provided by the most stripped down model available. Yet, as car manufactures know, the chances of me leaving the showroom with a base model is quite low; I've just got to have some of those options.

So, what's this got to do with getting a patent? When you file a patent application you have to remember to describe and claim both the feature-laden version you hope and expect your customers to buy AND the most basic, stripped down version that still works and is non-obvious. If you fail to include the basic model then your BMW patent will provide no protection against a competitor who thinks there is a market for a Yugo.

In a recent Appeals Court decision [PIN/NIP v. Platte Chemical] an inventor who described a process for treating tubers with a "pre-mixture" of a "combination" chemicals to inhibit sprout growth lost the right to claim the treatment of tubers with the same two chemicals in sequence to another inventor. In other words, although the first inventor realized the chemicals could be applied sequentially, his focus in the patent specification was so totally on the more efficient process that he failed to describe the less efficient process. An added claim for the less efficient process, without the description, was rejected.

To avoid being blinded by the elegance of your own invention, sit down with your Intellectual Property professional and make the shortest list of features your invention MUST have to function. Your patent attorney will build your claims starting from there, adding your wonderful optional features later.

 

 

Newsletter copyright 2003, TechRoadmap, Inc. Nothing in the preceding articles should be construed as legal advice. TechRoadmap Inc. serves as an interface between companies and their legal counsel.

 
 


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