2021-03-29

How do patents actually work?

IP without Jargon By Todd Bailey, Scale AI* (4 minute read) - April 8, 2021

Generating value in today’s digital world is easier than ever. So is copying and stealing.

But you can reduce the risks by protecting your IP (intellectual property). Although information about IP is everywhere, Scale AI wants to help you transform IP information into IP action. In this blog, IP without Jargon, we’re unpacking IP concepts, debunking IP myths and, along the way, throwing in some IP terminology [in square brackets] to help you learn the lingo. Let’s go.

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How do patents actually work?

Last year, Internet icon Airbnb was sued for infringing four IBM patents related to e-commerce. 

The patents included this one for “Methods for presenting advertising in an interactive service on a computer network”.   Zzzzzz.   (Sadly, patent lawyers won’t make the bestsellers’ list anytime soon.)  Still, this sounds like interesting new IBM technology. 

Guess again. Not new. The patents are actually from the early 90s – before Airbnb.  Before Google.  Before the web. 

As it turns out, the parties were able to settle things with a patent license. IBM previously also licensed these patents to Google, Apple, Amazon, Twitter and others. Basically, to everyone.   

 But that doesn’t seem like luck. These are probably pretty good patents.   

Pretty good patents from the 90s.

You might have heard someone say that today’s economy moves too fast for patents. Clearly, IBM wouldn’t agree. Funny thing: this myth has also been around since the 90s.

Well-planned patents are just as valuable today as ever.

But how can a patent from that long ago still cover how people use the web today? Technology has changed so much, you say.

To answer this, we first need to expose the truth about what a patent really is.

The legal right.

Previously, we uncovered that patents protect new or improved methods and things. But how does that protection actually work?

A patent provides a legal right to exclude. What does that mean???  Think of it like a veto. A right to veto others from making or commercializing the patented invention.

Or visualize a gate. A gate that can selectively allow (or prevent) access to the protected invention. The patent owner is the gatekeeper, deciding who may pass.

IP Myth: A patent protects everything described in the patent.

IP Fact: A patent only protects what’s in the patent’s “claims”.

Your legal picket fence.

The patent claims are a series of numbered paragraphs found at the end of the patent. They are usually preceded by something like “We claim…” or “What is claimed is…”.

The claims list and describe the key functions of the essential parts of the invention. They use words only, no pictures. That can make reading the claims a little confusing.

The claims are the key to the patent’s legal protection. Essentially, these words define what’s inside the legal picket fence.

A claim to a method invention in a software patent might begin “A computer-implemented method, comprising the steps of: identifying a plurality of past booking requests…”.

Or, a claim for a product improvement might begin “A portable device for UV sterilization of a container, comprising (i) a germicidal UV light source…(iii) a means for positioning…”.

If you take a look at the patents linked in this post, or earlier posts here or here, you can scroll down to see the claims, near the end of each patent.  There are usually about 20 claims, and sometimes more.  Read claim 1, for fun.

IP Myth: A patent protects what’s shown in the illustrated drawings.

IP Fact: This is so important, it’s worth repeating: a patent only protects what is in the patent’s claims.

Claim = a recipe.

Think of a patent claim like a recipe that lists the “ingredients” of the invention. This combination of ingredients is protected when made according to the recipe as written in the claim.

So, putting it altogether now, this means:  a patent owner has a veto power or legal gate over whether others can use the combination of elements defined in the patent claims.

In a nutshell, that is how a patent protects an invention. It provides a gate to a recipe.

Believe it or not, you now know more about how patents work than most of the rest of the world. A gate to a recipe. Of course, there’s some more detail to fill in, but in essence that’s it.

Next week, we’ll take on the burning question of how patent claims from the 90s could still be relevant to Airbnb today (hint: it has something to do with the claims).

Bonus question: Wondering how IBM can sue on patents filed over 20 years ago?   You are absolutely right: a patent’s lifespan is now 20 years from filing.  But the rules were different for patents filed back then.  A historical detail not worth remembering.

Takeaways.

  • Patents provide a veto or gate to control use of the protected invention by others.
  • A patent protects the combination of elements in the patent’s claims.
  • A patent claim is like a recipe with ingredients.

*Todd is Chief IP Officer at Scale AI, and a lawyer, patent agent and IP strategist with 25 years’ experience helping startups, SMEs and multinationals protect and commercialize their IP.

Please Note: Concepts discussed here have been simplified to facilitate learning. You should consult a qualified IP lawyer or agent to discuss your unique IP needs. Protecting your IP should not be a do-it-yourself project.

Scale AI is Canada’s AI Supercluster, investing in AI supply chain projects, acceleration and talent development across Canada. Visit us at www.scaleai.ca to see how we can help your business grow.

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