Achieving Valuable Cybersecurity Patents
Cybersecurity is a growing concern for private companies and government organizations aiming to protect their confidential information, as inadequate IP protection can leave them subject to great risk
Jeffrey A. Berkowitz & Gerson S. Panitch
| 25/05/2017
Illustration: Bigstock
With growing concerns over the protection of confidential information, it is no surprise that many in government and the private sectors are becoming more concerned with cybersecurity. Major computer companies such as IBM, Intel, and Dell have been making great advances in recent years, and they seem to have increased their patent filings in the field to match. But just as poor cyber security measures can leave a company vulnerable, inadequate IP protection can leave your business subject to a different type of risk. This article provides five important tips for securing strong, valuable and strategic cybersecurity patents.
1. Align your patents with company goals.
Patents enable companies to gain competitive advantage, define operational boundaries, expand and protect brand, generate licensing revenue, improve transaction leverage, and increase shareholder value. Why then do so many companies approach the process of patenting their inventions as if they are purchasing office products like pens and paper? Why do these companies pay so little attention to quality and focus almost entirely on quantity and price? Quality is what counts when it comes to patents. And the quality of a patent starts with an examination of the company’s goals, because a patent that does not align with a company goal is unlikely to provide meaningful value.
Aligning your patents with company goals is part of a strategic approach to patenting your inventions. This begins by gathering the right information to evaluate each invention disclosure. Just because an engineering development may be patentable does not mean that a patent on that development has value to your company. Therefore, besides describing the invention, invention disclosures should also ask inventors to provide information that can assist in evaluating the invention's relationship to the company's products.
2. Make sure your patents are clear and understandable.
Too often executives are heard saying, “I’m proud that we have patents, but when I read them, I really don’t understand them.” This is a problem because in the United States, for example, infringement of patents is decided by a jury of ordinary citizens (not technical experts) with much less knowledge of the technology than the company’s executives. A recent case from the U.S. Supreme Court emphasized that when claim language is vague, it is more likely that the patent will be declared invalid. This underscores the importance of making sure the claims are sufficiently clear so that a person of ordinary skill in the art can understand the invention. While the solution here may be straightforward – drafting clear patent applications, doing so is more art than science. Patent litigators who regularly see this and other issues in court usually have much keener sense of how to write patents that are sufficiently clear to comply with this rule.
3. Target each of your patent claims to only one class of infringer.
While the U.S. Patent Office is happy to grant patents with claims that recite the conduct of more than one actor, when it comes to enforcing those patents, the courts may conclude that because no one actor does everything, no one can infringe the claim. This problem, referred to as “divided infringement,” was recently addressed in yet another case from the U.S. Supreme Court, where it concluded that a claim requiring the actions of multiple parties was infringed by none of the parties. The patent owner should have selected a single class of infringer at the top of the value chain, and targeted the claims to that class. Had the patent owner conducted a proper strategic analysis before writing the patent, the patent owner would have likely avoided this devastating result.
4. Be certain that each of your patent applications describes and claims a technological improvement.
Software is often the subject of inventions in the cyber security field. It is often asked whether software is patentable. The answer is a resounding “Yes,” but only if extra care is taken to comply with special court-imposed rules. The most significant rule recently emphasized by the U.S. Supreme Court is that a patent cannot be directed to an “abstract idea.” The Supreme Court explained that for software inventions involving an “abstract idea,” the patent claims must include “sufficient additional elements” to focus on an application of the abstract idea rather than the abstract idea alone. Despite a significant surge in cybersecurity patents, if they are not done right to comply with the abstract idea rule, your company’s patents can provide a false sense of security. One way to meet the test is to focus your patents on a technological improvement. For example, the Supreme Court explained that patent claims may pass the test if the claims cover an improvement in the functioning of a computer or effect an improvement in any other technology or technical field.
Accordingly, when drafting your patent applications, explain how your software inventions improve the operation of the computer. Alternatively, explain how your software inventions effect an improvement in a technical field. With a proper strategic analysis, either (or both) of these solutions can be accomplished for software inventions, even software inventions involving business and financial applications, mobile apps, and other Internet-based developments.
5. Don’t be penny-wise and pound-foolish!
As one Israel executive recently said, “One thing I’ve learned about patents is to either do it right, or don’t do it at all. It is too expensive for a company to pinch pennies when it comes to patents.” This executive understood that it is relatively easy to get a patent, but quite hard to obtain a patent that has business value. But before spending money on patents, companies need to take the time to identify the core elements, often called the “lowest common denominators” of their products that will form the basis for powerful blocking patents. Companies who skip this step are more likely to obtain patents that might look nice hanging on the wall but which do little to advance the company’s business interests.
Complicated algorithms often become the focus of cyber security companies’ patents. But if there are five other non-patented algorithms that can accomplish the same goal, the patent blocking one route may be all but worthless. To isolate value, focus should be placed on those current and future product features that are likely to be sought after by customers and copied by competitors. Again, patents on core elements that others will need to compete provide the best protection, because they truly block competitors and in doing so, add value to the company.
As Albert Einstein noted, one cannot solve a problem with the same thinking that created it. To solve the “patenting problem” in your company, make the relatively small investment in a patent strategist with the right expertise to help you ensure that future precious resources are not wasted on irrelevant and unenforceable patents.
***
The authors are partners at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Cybersecurity is a growing concern for private companies and government organizations aiming to protect their confidential information, as inadequate IP protection can leave them subject to great risk
Illustration: Bigstock
With growing concerns over the protection of confidential information, it is no surprise that many in government and the private sectors are becoming more concerned with cybersecurity. Major computer companies such as IBM, Intel, and Dell have been making great advances in recent years, and they seem to have increased their patent filings in the field to match. But just as poor cyber security measures can leave a company vulnerable, inadequate IP protection can leave your business subject to a different type of risk. This article provides five important tips for securing strong, valuable and strategic cybersecurity patents.
1. Align your patents with company goals.
Patents enable companies to gain competitive advantage, define operational boundaries, expand and protect brand, generate licensing revenue, improve transaction leverage, and increase shareholder value. Why then do so many companies approach the process of patenting their inventions as if they are purchasing office products like pens and paper? Why do these companies pay so little attention to quality and focus almost entirely on quantity and price? Quality is what counts when it comes to patents. And the quality of a patent starts with an examination of the company’s goals, because a patent that does not align with a company goal is unlikely to provide meaningful value.
Aligning your patents with company goals is part of a strategic approach to patenting your inventions. This begins by gathering the right information to evaluate each invention disclosure. Just because an engineering development may be patentable does not mean that a patent on that development has value to your company. Therefore, besides describing the invention, invention disclosures should also ask inventors to provide information that can assist in evaluating the invention's relationship to the company's products.
2. Make sure your patents are clear and understandable.
Too often executives are heard saying, “I’m proud that we have patents, but when I read them, I really don’t understand them.” This is a problem because in the United States, for example, infringement of patents is decided by a jury of ordinary citizens (not technical experts) with much less knowledge of the technology than the company’s executives. A recent case from the U.S. Supreme Court emphasized that when claim language is vague, it is more likely that the patent will be declared invalid. This underscores the importance of making sure the claims are sufficiently clear so that a person of ordinary skill in the art can understand the invention. While the solution here may be straightforward – drafting clear patent applications, doing so is more art than science. Patent litigators who regularly see this and other issues in court usually have much keener sense of how to write patents that are sufficiently clear to comply with this rule.
3. Target each of your patent claims to only one class of infringer.
While the U.S. Patent Office is happy to grant patents with claims that recite the conduct of more than one actor, when it comes to enforcing those patents, the courts may conclude that because no one actor does everything, no one can infringe the claim. This problem, referred to as “divided infringement,” was recently addressed in yet another case from the U.S. Supreme Court, where it concluded that a claim requiring the actions of multiple parties was infringed by none of the parties. The patent owner should have selected a single class of infringer at the top of the value chain, and targeted the claims to that class. Had the patent owner conducted a proper strategic analysis before writing the patent, the patent owner would have likely avoided this devastating result.
4. Be certain that each of your patent applications describes and claims a technological improvement.
Software is often the subject of inventions in the cyber security field. It is often asked whether software is patentable. The answer is a resounding “Yes,” but only if extra care is taken to comply with special court-imposed rules. The most significant rule recently emphasized by the U.S. Supreme Court is that a patent cannot be directed to an “abstract idea.” The Supreme Court explained that for software inventions involving an “abstract idea,” the patent claims must include “sufficient additional elements” to focus on an application of the abstract idea rather than the abstract idea alone. Despite a significant surge in cybersecurity patents, if they are not done right to comply with the abstract idea rule, your company’s patents can provide a false sense of security. One way to meet the test is to focus your patents on a technological improvement. For example, the Supreme Court explained that patent claims may pass the test if the claims cover an improvement in the functioning of a computer or effect an improvement in any other technology or technical field.
Accordingly, when drafting your patent applications, explain how your software inventions improve the operation of the computer. Alternatively, explain how your software inventions effect an improvement in a technical field. With a proper strategic analysis, either (or both) of these solutions can be accomplished for software inventions, even software inventions involving business and financial applications, mobile apps, and other Internet-based developments.
5. Don’t be penny-wise and pound-foolish!
As one Israel executive recently said, “One thing I’ve learned about patents is to either do it right, or don’t do it at all. It is too expensive for a company to pinch pennies when it comes to patents.” This executive understood that it is relatively easy to get a patent, but quite hard to obtain a patent that has business value. But before spending money on patents, companies need to take the time to identify the core elements, often called the “lowest common denominators” of their products that will form the basis for powerful blocking patents. Companies who skip this step are more likely to obtain patents that might look nice hanging on the wall but which do little to advance the company’s business interests.
Complicated algorithms often become the focus of cyber security companies’ patents. But if there are five other non-patented algorithms that can accomplish the same goal, the patent blocking one route may be all but worthless. To isolate value, focus should be placed on those current and future product features that are likely to be sought after by customers and copied by competitors. Again, patents on core elements that others will need to compete provide the best protection, because they truly block competitors and in doing so, add value to the company.
As Albert Einstein noted, one cannot solve a problem with the same thinking that created it. To solve the “patenting problem” in your company, make the relatively small investment in a patent strategist with the right expertise to help you ensure that future precious resources are not wasted on irrelevant and unenforceable patents.
***
The authors are partners at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
