In 2006, Research in Motion, the maker of the once-ubiquitous BlackBerry device, had to pay $612.5 million to a patent holding company, NTP. Also known as “patent trolls,” these are people or companies that register patents with the sole purpose of being the patent holder, even though they do not plan on manufacturing any product or delivering any service that involves the technology patented. Their modus operandi revolves around filing for patents so they can enforce patent rights and obtain some kind of compensation, and this generates expenses for companies upwards of $29 billion in direct costs.
This is only one of the potential problems that you are likely to encounter if you’ve invented something in a field as innovative and convoluted as AI, in which technology patents are notoriously challenging to obtain. It is a process that I’ve navigated, and one that is riddled with challenges and uncertainties, particularly because code cannot be patented, and mathematical algorithms are not patentable in many jurisdictions.
What is possible is to patent general principles as well as the sequence of steps involved in the corresponding innovation.
In this regard, there are two possible risky scenarios:
- You end up with a vague patent that does not provide complete protection. This leaves you in a vulnerable position.
- Inevitably, you will run across several other patents that have similarities to yours, even if you genuinely have made a unique discovery. This can lead to your patent being rejected.
To maximize your chances of getting this grueling process right, here are four tips that will help protect your work so you can capitalize on it.
Engaging in a conversation with a patent examiner is much like appearing before a judge in a court of law: Honesty is the only policy.
Double down on due diligence at every step
Before you file a provisional patent, do meticulous research to see if there are any similar ones already registered. Then repeat the process before submitting your main patent application.
As tedious as this sounds, it is important that you do it. New, similar patents will likely appear during that gap year between your provisional patent and your main patent, especially in AI, which is a sector that many entrepreneurs are trying to get into and monetize. Remember that once you have filed your main patent, the text is set in stone — you cannot change it.
Also, if your patent gets rejected and you get the chance to connect with the relevant examiner and incorporate their suggestions, you will need to conduct another patent search. Even if you already did this countless times before filing, doing this research can make the difference between having to repeat this process again and being given the green light.
Consider the combined impact of competing patents
Identifying similar patents is the first step. However, when dealing with competing patents, you must consider not only individual similarities, but also the combined effect they might have on your patent.
Let’s say you have invented something that differs, individually, from patent A and patent B. However, combining these two patents results in a patent that is strikingly similar to what you have. This is why I emphasized so much on making a deep, thorough investigation in the first point, because those findings will be invaluable when attempting to figure out if two patents could harm you when combined.
When researching, do not rely solely on Google Patents. Even though it is a popular tool that is easy to use, it does not encompass all databases and archives, and could leave you with incomplete information. With something as delicate as patents, when you can’t see the whole picture, you could end up making the wrong decision. For better results, explore multiple patent databases.
Include mandatory and optional steps in your technology sequence
Your technology sequence is the backbone of your patent application, so it needs to be detailed with both mandatory and optional steps. This protects you from potential vulnerabilities that competitors might exploit.
Let’s assume you have a technology that relies on an algorithm that goes A-B-C. Then someone comes across it and adds an extra step. Their algorithm goes A-A1-B-C and they argue that this variation is crucial. To protect against this threat, outline all the possible algorithmic variations that your technology could have. This will safeguard its integrity.
It’s also possible that this could manifest the other way around: Your competitors could remove a step from your algorithm and simplify the sequence. As a further shield, describe all the potential variations that your technology can effectively function with, even with a simplified sequence — for example, A-C. You can state that utilizing this sequence could lead to diminished efficiency, but it is better to be safe and list it all than to be surprised.
If your application was rejected, request a call before appealing
It’s common to get a rejection for an initial patent application. Don’t get discouraged if this happens. At the same time, don’t rush to appeal. Many founders make the mistake of rewriting only their text to differentiate it from the patent that led to the rejection, and then, without further questioning, resubmit the application. Instead, request a call with the patent examiner.
This call is your chance to demonstrate to the examiner that you have a genuine product and that your technology works. Therefore, make the best of it. Provide a live demonstration, highlight its functionality, and talk about the benefits it can bring to society. Approach this meeting the same way you would approach one with a critical investor or customer — one in which building rapport is crucial. Nailing this call can give you critical insights for your appeal to be successful, including reformulating the statements that were considered problematic so that you can focus only on the aspects that really need to be changed.
Engaging in a conversation with a patent examiner is much like appearing before a judge in a court of law: Honesty is the only policy. Should you choose to deceive and your falsehood is uncovered, you may find yourself subject to criminal liabilities.