Rick Jezzi talks about the over-patenting phenomenon.
In the last few years I have had the opportunity to conduct many prior art searches for clients mostly in the materials and product areas for disposable absorbents.Even though these searches were tedious, it was interesting to observe the trends that have evolved not only in the technology base itself, but in the strategy used by various companies.
Today, most major companies continue the strategy of patenting “everything and anything." Their high volume of submissions provides fertile ground for invalidity-opinions on even their own patents.Even though we can expect the majors to continue with their strategy; it is interesting to see the evolution of newer companies entering the patenting “game.” Mostly, these are smaller companies that do not have a history of possessing significant patent portfolios.As a result of possible internal management directives, many of these companies have opened the disclosure floodgates and started filing on whatever they have been working on.
Most of them are, at a very high cost to their bottom line, patenting very narrow ideas and in many cases concepts that previously exist.Since prior art searches oftentimes are an exercise that is not done diligently, most third-party patent attorneys file very broad claims. For one, these attorneys have been trained to take this approach, and secondly, they are not familiar enough with the technology to know what is really new or novel.In some cases, they are able to get these patents through the USPTO. This has created a situation where the infringement of invalid but existing patents has become a frequent occurrence in new product and material initiatives.
Therefore, the question regarding this strategy is whether it really accomplishes anything, as the cost of asserting a patent is in the millions of dollars.It is doubtful that managers from smaller firms would initiate law suits on patents that are weak since the cost effectiveness for this strategy is questionable.For this reason, I have always advocated a thorough search in determining prior art, as well as a patent policy of only filing quality rather than quantity.Even though the frequency in today’s patent environment is not high, it really is refreshing and somewhat exciting to occasionally find a new patent that is issued on truly a new concept and theme.
Rick Jezzi is a chemical engineer and has experience in the areas of tissue manufacturing, nonwoven, and personal care absorbent products while at Scott Paper, Kimberly Clark and Paragon Trade Brands where he was involved in technical development and the expansion into Asia and Latin America
. Before retiring from Clopay Plastic Products Company as Vice President of R&D and GM of South America and Asia Pacific. He managed technologies in Hygiene, Medical, Industrial and New Business Development, as well as managing global M&A and JV’s.He now consults in the areas of his expertise. He can be reached at Rick@ADJezziAssoc.com