Assessing the quality of a patent is somewhat like assessing the quality of a car, or a movie, or a business opportunity. What’s important to quality depends on who’s asking and what they want. Despite this, people sometimes pronounce a rule governing patent quality as if it is a universal certainty, not merely a factor or a heuristic. Here are some examples, and why I believe they overstate the importance of a particular viewpoint.
#1 Patent Quality Is Merely Marketing Hype.
To support this viewpoint, someone might point to successful products that are not covered by patents, such as Coca-Cola or WD-40. If you don’t need a patent to succeed, then patent quality is not important. Therefore, patents are only marketing hype.
My response is that patents are one of several intellectual property options, and choosing the best options for your particular situation is an important strategic choice. Patents are not always available, and even when they are they might not be the best choice. Trademarks and trade secrets also provide powerful protection. Coca-Cola® is a registered mark of The Coca-Cola Company for beverages and other items, and the Coca-Cola formula is a trade secret. Similarly, WD-40® is a registered mark of WD-40 Manufacturing Company, and the WD-40 formula is a trade secret. But that doesn’t mean patents can be ignored. Many other successful products or services have been protected by patents, including Amazon’s one-click purchasing patent (US 5960411), TiVo’s digital video recorder patent (US 6233389), and Apple’s touchscreen gesture recognition patent (US 7479949).
#2 Patent Quality Is Subjective.
I agree there is no single simple authoritative measure of patent quality. Different people use different criteria to assess patent quality; see Myths #3–10 below. The federal government agency that examines patent applications (the USPTO) does not rank the patents it grants, or the patent applications it denies. The lowest acceptable quality patent granted gets the same legal presumption of validity as the highest quality patent granted.
But the fact some subjectivity is involved does not mean patent quality assessment is entirely subjective. It does not make quality assessment meaningless. We also rely on subjective impressions when we assess the quality of a car, or a movie, or a business opportunity, but we still do those assessments, and we consider those quality assessments when we decide how to invest our time and money. For a discussion of criteria I consider when assessing patent quality (and patent application quality), see my article How to Assess Patent Quality.
#3 Only Litigation Will Reveal a Patent’s Quality.
According to this viewpoint, only the fire of litigation will reveal the value – or emptiness – at the core of a patent. One problem with this view is that most patents are never litigated but nonetheless prove valuable in other ways, such as bringing investment money or licensing fees, or strengthening a company’s reputation, or attracting talented innovators. Another problem with this view is that people generally only litigate a patent when they believe they can win, which means that some patent litigation happens because someone has concluded – probably after careful investigation – that the target patent has a quality defect.
#4 More Expensive Means Higher Quality.
I agree with this at the low end of the spectrum. If you pay $500 for a patent application it’s very likely the quality of the application you get will be much lower than you’d get for $5000 from a patent agent or a patent attorney who doesn’t do $500 applications. But there are diminishing returns. The quality difference between a $5000 application and a $10,000 application could be significant, depending on the complexity of the situation, but the difference between the $10,000 application and a $15,000 application on the same invention is going to be smaller, and the difference between the $15,000 application and a $20,000 application on that invention will be smaller still.
#5 Bigger Law Firms Mean Higher Quality.
This is plausible. High quality patent applications reflect (a) understanding of the technology, (b) understanding of patent prosecution procedures, laws, and quirks, (c) understanding of the patent applicant’s business goals, (d) understanding of intellectual property options that are supplements or alternatives to patent protection, and (e) understanding of patent exploitation contexts such as licensing negotiations and litigation. Larger law firms are more likely to have people who can bring these different areas of experience and knowledge to their patent application drafting work or to their review of patent application drafts.
However, that kind of team approach tends to drive up client costs, and also presumes everyone on the team is communicating effectively and efficiently. For example, a senior partner who understands the client’s business context must effectively and efficiently communicate that understanding to a junior associate who actually writes the patent application, so the claims can be properly focused and the fields of use can be properly supported. Similarly, a litigator must effectively and efficiently communicate their understanding of exploitable vulnerabilities to the junior associate. Larger firms with effective and efficient internal communication do produce many excellent patent applications, and for complex or high-stakes matters such as litigation, regulatory compliance, or worldwide portfolios, the depth of a large firm’s resources can be a genuine advantage.
When you can find it, a better approach is to work with fewer people – perhaps as few as one – who meet all those experience and knowledge criteria. One reason to favor patent attorneys over patent agents is that attorneys can be experienced and helpful in licensing, which agents cannot do (because they cannot practice law outside assisting you with patent application drafting and prosecution). One reason to avoid relying on a patent attorney who does not seem to understand your technology is that they will either need to work with someone who does, or else they will be giving you a deeply flawed patent application.
#6 A Team of Patent Attorneys Means Higher Quality.
This is also plausible, because we assume that more eyes are better. Having more patent attorneys review a draft application could mean fewer flaws in the application will go undetected and uncorrected.
However, sometimes a “problem” is merely an unmet preference. When I started writing patents over 30 years ago, I was the only associate at a patent law firm with four partners. Each application I wrote was reviewed by each of the partners. I quickly learned to categorize the feedback I received. Some of it was substantive, and making those changes clearly improved the draft application. But other feedback was merely that reviewer’s personal preference, which they would acknowledge if asked. Moreover, sometimes a change ordered by one partner was inconsistent with a change ordered by a different partner, and it was unclear which change would most improve (or least harm) the draft application.
Today, tailored AI tools can spot problems with draft patent applications, and spot vulnerabilities in granted patents. I use such tools, which I’ve created based on my 30+ years of experience that includes drafting patents and guiding them through the Patent Office, supporting patent litigators, licensing patents, and providing legal opinions on patents. My review of the AI output draws on that same knowledge and experience. The Step Forward™ service helps identify fixable vulnerabilities in patent applications, and the Check A Patent™ service helps identify exploitable vulnerabilities in granted patents.
#7 Broader Claims Mean Higher Quality.
This is a classic. Broad claims would seem to be better because they make it easier to prove infringement and harder for competitors to design around. But don’t forget that broad claims are also easier to invalidate, because they cover more potential prior art. The best claims are not broad claims, or narrow claims. The best claims are a set of broad, intermediate, and narrow claims, plus the option to add other claims later based on supporting disclosure in a timely-filed pending continuation application.
#8 Faster Allowance Means Higher Quality.
Perhaps the Patent Examiner looked at the application, saw there was no argument to be made against it, and therefore allowed the case. This can happen. But it does not mean that the application was perfect. Valuable opportunities may have been missed.
For example, there may have been no prior art rejections because the claims were very narrow; broader claims might have also been allowed, perhaps after some back-and-forth between the applicant and the Patent Office. As another example, perhaps the claims were as broad as the prior art would permit, but application quality would have been improved by adding a description of more embodiments, or adding support and claims for additional fields of use, or submitting claims that would make infringement easier to detect.
#9 More Prior Art Submitted Means Higher Quality.
Submitting a piece of prior art during examination of a patent application can make it substantially more difficult for a competitor to use that prior art later to attack the patent. However, there are diminishing returns. Submitting 100 pieces of prior art may not provide much additional benefit over submitting 50 pieces, and submitting more than 50 also now carries a USPTO information disclosure statement size fee. Moreover, some Patent Examiners will require the applicant to provide a concise explanation of the relevance of each reference in a submission they deem too large (the threshold varies from one Examiner to another), which takes additional time and money. Such explanations can also provide ammunition for later attacks against the patent.
#10 Using AI Means Lower Quality.
Many AI-drafted patent applications appear fine on the surface, but experienced patent attorneys will find serious flaws in them. Some attorneys even refuse to accept AI-drafted applications as a starting point, or as something they should just “tweak a bit” and then submit. However, in my view use of AI is not an all-or-nothing proposition. Responsible use of AI which is guided by recognition and mitigation of the risks, and subject to careful human review, makes it possible to more thoroughly explore inventions, and helps independent inventors who write their own applications produce better applications.