Patenthink

In lesson 7, we talked about how to connect the innovation that is to be patented to its market context in writing about what what the new idea is. Here we will give tips for connecting the market context to the invention in the other main topic of the patent: how the new idea is to be realized.

If your talent is in technology, as it is for many patent writers, you will naturally be driven to write clever and rich descriptions of the how, that is, the technology used to realize the innovation. That’s fine. You need to do that to meet the rules. And beating the technological drum will make the patent stronger.

But don’t neglect the non-technical market setting of the technology in your writing or you will fall victim to this paradox of patents: The patenting process asks whether an idea is technologically new enough in its field (mostly ignoring whether the idea has commercially merit). Yet the value of the patent will turn on whether some realization of the idea has worth in the market (not on the subtle shades of its difference from what came before).

As a writer, you should keep in mind a two-way inference that bridges this paradox: In one direction, we infer that, unless a technology concept is new enough, it will not translate to marketplace success for realizations of that concept. In the other direction, we deduce that, when realizations of a concept sell well against older devices, the concept must have been patent worthy.

Curiously, the patent process neither cares much about this bridge nor invites the patent writer to cross it. If you refuse that pill and go ahead boldly to explain why and how the realizations of the concept are market-worthy, the patent you write will be more persuasive, more relevant, and more potent.

A simple way to tie a realization of an invention to a market is to recite how features of the realization are useful in the real world to real buyers. If the real bicycle wheel includes a pneumatic rubber tire, explain that the rubber tire is better than the old metal one. And explain why: because the pressured air chamber gives a more comfortable ride, the wheel is cheaper to make, and the tire lasts longer. But don’t stop there. Tell how the ride is more comfortable (the air in the tire absorbs shocks against the hard asphalt), why the wheel is cheaper to make (maybe metal is more expensive and must be machined by hand), and what makes it last longer (vulcanized rubber is less susceptible to failure than machined metal, when used on a bicycle).

Keep in mind that the market context also can suggest ways for you to go back and express what the innovation is, not just how it is realized. If pneumatic rubber tires will be easier to ride, an aspect of the what could be “a way to make a bicycle ride more comfortable by using pressurized air to absorb pavement shocks.”

As a small diversion from the line of prior lessons, let’s talk about how the market context of the innovation you are trying to protect figures into your patent writing.

Market context matters. (If we ignore the trivially few people who get patents on principle, market context is the key to why people go after patents.) When products covered by a patent play prominently in a market, and there are no easy-to-substitute goods, the patent owner’s right to sue the players in that market makes the patent valuable.

Although you can craft a worthwhile patent that does not in words connect the invention to its economic value, you should at least consider whether and how to infuse market concepts into your work.

Recall that in writing the patent you will answer two central questions: what is the invention and how can it be realized.

The what is the thing that makes the invention new and different enough from what is publicly accessible to garner a patent and survive litigation over it. In writing about the what, your text should be technologically accurate (correct and unambiguous), express what makes it different broadly and clearly, and avoid common technical wording pitfalls. Beyond those basics, it can also be useful to tell the reader about the market context of the what–as long as you are careful how you say it and where you put it.

In writing about the market context, keep in mind that it is a different notion from the concept called, in patent lingo, the “field” of the invention. The field comes into play in testing whether an invention is entitled to a patent. The test—would the invention have been obvious at the time it was made—is applied from the view point of someone who had “ordinary skill” in that field at that time.

Patent writers often think of this “field” as a field of human endeavor, a field of research or engineering, such as computer science, or immunization, or nanotubes. The field of an invention may be communication networks. Yet the market context of that invention (and the interest of the investor in the business that wants to get the patent) may be the sale of Ethernet routers bundled with other Ethernet equipment to large corporate United States customers.

The next lesson will cover more on how and where to write about market context in the patent.