The hidden value of hiding patents
My recent post, ‘Patent Sharks (Trolls?) – insightful or missing the point?‘ sparked an interesting discussion about hidden patents. Are they always able to be found? is the process 100% guarranteed? what can you do about it?
One of the interesting aspects of the discussion was the extent to which patents are now being drafted to make them harder to find, by using alternative terminology. Allan Main, a regular reader of the blog, gave the great example of the term ‘mammalian maternal excretions’ being used instead of ‘milk’. I suggested that great patent searchers will thoroughly understand the technology and try alternative descriptors that would include such terms. (Though I hastily added that a search is never 100% guarranteed.)
I also mentioned that such patents are at risk of invalidation if the descriptors don’t adequately describe the invention – for lack of enablement / 112 / lack of sufficiency. So this helps the searcher to find them.
If this can be achieved, one of the interesting side benefits of finding alternative, hard to search, terminology is that it makes it harder to find relevant prior art. ‘Mammalian maternal excretions’ won’t get you there because it clearly describes milk. However, what about a patent claim that characterises milk by virtue of some property that has heretofore not been found in the literature? I’m not saying that one can today get a valid claim to milk by this method, but a claim to some novel feature of milk about which there is a risk of an obviousness argument might fit the bill. This technique has, of course, been used for decades in the Pharmaceutical industry.
5 Comments on “The hidden value of hiding patents”
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Duncan,Can Allan Main please share the identity of the patent he mentions?I’ve searched U.S. patents and U.S. published applications and haven’t found it. Perhaps it is a PCT application? Or a non-U.S. patent?The issue seems like an intriguing one, so it would be good to take a look at the particular patent itself.Best,Joe
Hey, thanks Joe.Allan?
I’m (somewhat) embarrassed to say that I cited the instance from memory, and now I too cannot trace to original specification. It hails from work I did when employed elsewhere and so I can no longer source my original records. The party is globally active so it is as likley to hail from any jurisdiction in the world.
I may have the terminology slightly off the mark (though today I searched for “secretions” in place of “excretions” without luck, so it’s more than that). Possibly it was “bovine” instead of “mammalian”, though I recall that the reach was beyond just cow’s milk.
At the time the instance was cited to Duncan merely as an example of how it was possible to draft patents with obscure (but accurate) terms so as to make it hard to find. This provides the perfect grounds for future entrapment by one so devious as to obscurely draft a spec. So while it is frustrating to not now be able to provide the evidence, the principle stands secure.
Our discussion went on to consider whether such obscure drafting could provide a patent that a “troll” might pay a premium for due to the greater opportunity to blind-side a target. What do you think?
Alan,No worries! But if you come across it again, or something like it, let us know. Also, I’m sure most of us have seen claim and disclosure language that seems hard to explain except as intentional obscurantism.The deeper question you raise – would someone pay a premium for what might be viewed as a stealth weapon? – is a tough one. I suppose what I’m wondering is whether the stealth premium is offset by the discounts for (a) increased likelihood that the claim construction issue won’t go one’s way (because the obscurantism raises the likelihood of judicial error (or judicial ire)), and (b) increased likelihood that the claim will be struck down as invalid for indefiniteness.Perhaps if the patent is used only for its threat settlement value, or as part of a larger portfolio, the stealth premium dominates the discounts?Best,Joe
I’m with you on this Joe.Though I’d have to add that the indefiniteness of the claim language and the potential construction and validity problems would be pretty transparent to any entity which might be a serious target for a troll. So I’m not sure if there is any real troll value, either…What are your thoughts, Allan?Does anyone else have a view or has anyone else seen similar patents? enforced?