Market-Centered Approach Yields Broader Claims

Every patent attorney with whom I have ever discussed the issue said that he tries to claim as broadly as possible. I don't doubt the intent, but I seriously doubt the effectiveness of most of those efforts. After several years I have finally concluded that the difficulty lies in the patent attorneys approaching the subject matter from an invention-centered approach. The vast majority of patent attorneys start with what the inventor says he invented, and then try to mentally expand out that idea to cover a broad range of alternatives.

Graphically, the invention-centered approach is apparent in the following Venn diagrams. Every invention is really a solution to a problem. Ideally, the inventor would claim every commercially viable solution, which in the following diagram would be the entire space.

Figure 45 —  An Invention Is A Solution To A Problem

It would be nice to claim all possible solutions to a problem. But that just isn't possible. Almost every inventive space is already occupied by at least some prior art (represented by the rectangles), which precludes the inventor from capturing the entire space.

Figure 46 — But Some Solutions Are Already Known

In the diagram below, the invention is shown as a light bulb. One could, of course, claim the area occupied by the light bulb. But that is usually a very bad idea because the "invention" as contemplated by the inventor, covers such a small area.

Figure 47 — Invention Centered Approach Focuses On Claiming The Invention

Of course, patent attorneys are taught to look beyond the inventor's preferred embodiments, to claim the concept of the invention as broadly as possible. This is what patent attorneys mean when they say that they will file the broadest possible application. But the largest area that can be drawn from expanding the area covered by the light bulb (invention) is still limited by the prior art.

Figure 48 — Broadest Conception Of The Invention Runs Up Against The Prior Art

Thus, even that supposedly broadest possible claim leaves a lot of white space. The market-centered approach is conceptually very different. In market-centered (white space) patenting the attorney searches the field and the prior art, and then tries to claim everything that is available to be claimed. What the inventor thinks he invented is almost irrelevant, because it becomes a very minor aspect of the claimed subject matter.

The market-centered approach can be readily understood by considering the following diagram. Here again the field includes what the inventor thinks he invented (represented by a light bulb), and the prior art ( (represented by the rectangles). But instead of being limited to the claiming the subject matter of the larger light bulbs, the patent attorney claims substantially the entire remaining "white space". In that way he claims everything in the field that is novel.

Let's start with the same conceptual space, and the same invention. As before, the invention is shown as a light bulb, and the prior art is shown by the rectangles.

Figure 49 — Market Centered Approach Starts With The Same Invention

But instead of broadening the coverage to claim the space of a bigger light bulb, a patent attorney using market-centered claiming works with the inventor to figure out what is left open in the field, i.e. from a marketing perspective what other inventions are needed to monopolize the remainder of the market.

Figure 50 — But Focuses On All Ways Of Stopping The Competition

Does that make the patent attorney a co-inventor? No, of course not. The fact is that if the patent attorney can devise all these other solutions from the one solution developed by the inventor, then the other solutions were inherent in the inventor's invention. For example, years ago everyone knew that having pop-tops pop off soda and beer cans was a bad idea. The tabs cut people's fingers, caused pollution, and even ended up being swallowed by fish. Then someone came along with the idea of a pop-top that didn't pop off. Yes, he had a preferred embodiment, but that wasn't the invention. The invention was not how to do it, but the idea of doing it! All those other solutions were inherent in the inventor's concept.

Indeed, all those other ideas needed to be claimed in order to cut out the competition. From a marketing standpoint, it really didn't matter how the inventor thought the new tab should be designed, as long as it kept competitors out of the marketplace. What needed to be claimed was all of the remaining space! That is what the patent attorney should be focused on, not the invention.

The final step of the really good patent attorney is to do the difficult mental step of figuring out how to claim all those different inventions. It can be done! When the process is finished, a patent application is written that basically claims all the "white space", i.e. the entire space that is not covered by the prior art. The resulting coverage looks something like a bird's eye view of a golf course, with the claims covering all of the available subject matter.

Figure 51 — Market Centered Approach Claims All Available Subject Matter

Returning to the example of pop-tops for soda cans, an invention-centered approach might focus on a preferred shape of a pull tag, and then 35expand out to cover reasonable alternatives. But a market-centered approach would try to cover all pop-tops regardless of how they function.

As another example, assume that an inventor discloses a novel compound in which a portion of the molecule (R group) is a methoxy rather than hydrogen or hydroxyl. A patent attorney working from an invention centered approach would probably wonder whether ethoxy would work as well, and might even claim the R group as any lower alkane ether. Broadly claiming the alternatives in that manner would certainly be better than just claiming methoxy, but there would undoubtedly still be subject matter left on the table for competitors to utilize. A patent attorney working from a market-centered approach would recognize that the claimable invention lies in every compound where R is something other than hydrogen or hydroxyl, and then claim that.

The point is that the market-centered approach to patenting yields broader claims than invention-centered approach. Once people understand the difference, it is almost impossible for them to go back to the old-fashioned invention-centered approach to claiming.

Figure 52 — Market Centered Approach Is Simply Better

Now it is true that claiming broadly from a market perspective can lead to problems with enablement. Whenever the patent attorney is trying to cover everything in the field other than what is already known, (all the "white space"), he will almost certainly wind up claiming things that are not readily manufactured using known technology. But that is where the patent attorney needs to brainstorm with the inventor. Together they need to devise real or imagined experiments that would enable the more far-flung reaches of the claimed subject matter. They should also seek to identify texts and articles that would assist in the enablement, and that can be incorporated by reference into the Specification. Finally, the patent attorney needs to mentally carve up the claimed subject matter using the target claiming techniques discussed above, draft correspondingly broad claims, and then an appropriately supporting Specification.

Some critics also argue that the market-centered approach to claiming is improper, because it goes way beyond what the inventor invented, and because the patent attorney is now the inventor. I disagree. The essence of invention is recognizing something that was not previously recognized. When the inventor comes to a patent attorney with a new idea, the inventor is necessarily disclosing something that is novel and non-obvious. Inherent within that recognition are many other ideas, and the inventor should get credit for both the surface idea and the inherent ideas.

Interestingly, company managements seem to understand market-centered claiming much better than inventors. They are, after all, often focused on the market and the competition, and much less personally invested in whether the inventor is brilliant. Management is much more interested in what the invention means with respect to the competition. For this reason I often find it useful to include management people in the brainstorming sessions, or at least keep them apprised of the strategy. They are often instrumental in smoothing ruffled feathers of inventors who find their preferred embodiment treated as a minor aspect of the patent application.