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There are many pitfalls to avoid when prosecuting Taiwan patents based on US priority patent applications. Avoid new matter rejections in Taiwan and reduce costs with intelligent amendments. A must watch for patent pros that protect their client’s IP in Taiwan. Watch the following video and learn from our colleagues from Jou and Jou Patent Offices in Taiwan.
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This patent is part of a family of patents we filed for our client ShoCard to protect their expanding technology. They are a very innovative group, and it was a pleasure to work with them to develop a drafting strategy that set them up to defend against Alice. A deep spec with strategic support is required, or else good ideas are categorized as abstract — when they clearly are not!
Teardown of a Blockchain Patent
An exemplary blockchain-related patent is U.S. Patent No. 10,007,913, which was issued to ShoCard Inc., a blockchain startup founded in 2015 and based in Cupertino, U.S.A. The patent was issued on June 26, 2018, and is a fine specimen to disassemble because the invention solves a problem that we are all too familiar with, and it clearly articulates a real-world application of blockchain technology.
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More time is wasted in patent litigation arguing over what a term means than anything else. Drafters should write dependent claims that provide for “built-in” claim construction, instead of simply adding elements. After writing an independent claim, find words that need clarification, and provide the clarification directly in the dependent claims! As a bonus, the additional detail in the dependent claims may assist in combating validity challenges.
Patent quality starts with a well conducted disclosure. If details are not collected or the focus strays to include superfluous details, the resulting patent may be weak on arrival. Patent drafters need to drive the disclosure meeting to make sure all critical information is extracted — not just what the inventor provides.
Examiners are very good at assembling references to cover all elements in a claim. But, do the reasons make logical sense? Often, the reasons for the combination are simply conclusions! Challenge the conclusions and insist that the Examiner articulate the reasons with sound rationale.
Don’t wait to ask why during litigation. The easiest and cheapest way to argue non-obviousness is to point to the specification! If the specification does not say why something is important, costly expert declaration wars become the only option. Do the work up front — your budget will thank you!
The patent process is long, expensive and getting more complicated by the day. There are so many factors you can’t control, such as the prior art, difficult examiners, and changes in technology. However, as the patent drafter, you should always seek answers to three important questions before drafting any claim. Obvious…but is it really?
Intellectual property if not protected is simply dedicated to the public. Companies invest large sums developing their unique services and products, and just as much effort needs to be spent “shaking the tree” from within or with the assistance of outside counsel. Ask inventors what they are working on, what problems they solved, and constantly provide education and rewards. A harvest is only as good as what you put into it! Happy harvesting!
Saving costs with fixed fee preparation or low fee caps will reduce the value of your IP assets. Cost is important, so separate out value driving inventions and treat them special. If the invention becomes valuable and the patent is poorly written or does not have enough support, forget about enforcement!
Avoid the grinder — one size does not fit all.
