[Mastering the IP Portfolio, by Taeyoung Lee] ④ Include Every Spec! Strategies for Securing a Core Patent with the First Filing

This is the fourth column in the "Mastering the IP Portfolio" series by our patent attorney Taeyoung Lee, published on September 7, 2020 in IP Daily, a media outlet specializing in intellectual property.

This column discusses strategies for the first patent filing to secure a core patent when a new product is developed.

[Mastering the IP Portfolio, by Taeyoung Lee] ③ Building a Portfolio: Gillette's Excessive(?) Efforts

In the previous column, we looked at how Gillette built an IP portfolio around its FlexBall technology. In this column, we look at strategies for the first patent filing to secure a core patent when a next-generation product is developed.

Include "every spec of the new product" in the patent specification

Imagine that you are the IP manager of a company. Your company has just developed a next-generation product that is central to its business. Suppose that the patentable items shown below have been identified in the new product. Here, you may think of an item as a component part included in the new product.

Since four patentable items have been identified, the IP manager naturally thinks that four patent applications should be filed. That is correct, but securing a core patent portfolio requires attention to finer details. Even if four applications are filed, how should the patent specifications be drafted?

To secure a core patent, it is advisable, as shown in the drawing below, to file the patent applications with every item included in the new product described in the detailed description of the invention. In fact, when analyzing large global companies' patents on new products, one can easily find cases in which the detailed description is identical and only the items claimed as the subject of the invention differ.

Make "flexible changes to the subject of the invention" possible through divisional applications

Filing patent applications in this way has the drawback that the detailed description of the invention becomes very long, but it provides great flexibility in building a patent portfolio later on. The biggest advantage is...

(For the full column, please click the link below.)

LNB IP Law Firm