Material adapted from Patent Offense: 7 Steps to a Safe, Secure Patent Portfolio by: Craige Thompson.
There is an added up front investment to get the Point of Novelty Report (PON), but the benefits are tremendous. By spending this additional time thinking in the beginning, you make all that time up and more in efficiency when actually writing the patent application.
A key paradigm on patents is finding “what’s new.” We are looking for the new deltas, those new combinations of features not already revealed in the prior art landscape. Spending time describing the prior art landscape adds no value. Yet that is what a lot of patents spend way too much time doing—describing what is already known. If prior art is not somehow combinable with something that is new, it does not really add any value.
Most people who draft a lot of patent applications make them nice and long, but a lot of the information is useless. They do not understand the technology. They do not have a clear picture of this landscape of the prior art, because they do not know where the prior art stops and where the innovation starts.
It is like shooting everywhere you can, hoping that there is a target out there for you to hit. That is just trying to fool the client into thinking that they have got a lot of value just because the patent application is brimming with words and a lot of pictures and a lot of columns of text, but it does not add enforceable value to the client’s legal rights.
Patents Are About New Things
If the prior art is something that is combinable, if you can add it to the claims, then it can add value. But if the prior art is old, if it does not somehow add something that you can protect with a claim, then why are we wasting time having attorneys describing and writing about it at hundreds of dollars an hour? It is adding no value. Patents are about new things, new technologies—not old technologies.
Behind the seven step process is our strategy to take enough time to actually locate the target (PON) and take very precise, laser scope shots at it. In my view, this is being very efficient. It takes a little bit longer to get started because we cannot just jump right from the Kick Off Meeting and into writing a patent application. We stop, find the target, and resolve what’s new. We figure out what would not add value, and we do not spend any time there.
Point of Novelty paradigm
From this big paradigm, the one key element to understand is to find a Point of Novelty, that one sentence articulation of what is actually new and that we have reason to believe to be patentable. That is locating the target: we turn on the light, find our mark, paint the target with a laser and look at it. And now we are going to spend our time describing what the target looks like now and what it could look like five years from now.
We can propose a good, clean, PON that we can give to the executive and say, “This PON is what I think we can likely patent for you. If this PON is not valuable to you, then do not prepare and file a patent.”