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“Patent lawyers used to be scriveners,” says Robert D. Fish of Fish & Associates. He’s been a patent lawyer himself for more than 20 years. “In the old days someone would have an invention, and the attorney would be expected to just write up claims for that specific invention. But now that’s all changed. Sophisticated clients want us to be creative contributors.”
As we saw in Part One, patents are not strictly about inventions anymore. At the bare minimum, they must claim what the inventor thinks is the invention. But they should also try to cover the white space in which the technology might play. Even better, they should cover ideas and markets that don’t even exist today—but will in the future.
Fish is not the least bit unhappy about this state of play: “We now get to be part of the invention process. We get to put our own knowledge and our own creativity into the patent applications.” Also unperturbed are other patent lawyers who have discovered how to bring more right-brain thinking and creativity to their work. Dare we say it, patents might even become fun.
If patents are going to become more creative, they are also going to become more challenging to write. A scrivener works alone, but the new patent lawyer will have to be a member (if not the leader) of a multidisciplinary team, and much more involved in the brainstorming process. That team will likely include R&D and product managers, but might also comprise logistics, sales and even marketing experts who know the market, where it’s going, and what’s commercially important. The team will likely start much earlier in the development process, too. It may well be working on roadmaps that extend years into the future.
In view of these new demands, patent lawyers need to learn to work with these diverse individuals, and expand their own understanding of the business side of industry more than ever before. “On these new patents, technical expertise is still important, but will become less important than creativity and communications skills,” says Fish. “Claiming an entire marketplace requires forest people, not tree people.”
With more insight and broader market implications packed into them, patent portfolios will tend to become more and more valuable. A well-targeted patent portfolio, such as the Siri-related patents for Apple, could well define a large part of the future of an entire company. What’s more, the high stakes and transparency changes brought on by the America Invents Act will create pressure for patents to be forward-thinking right out of the box. This will require new skills from lawyers, excellent tools and close collaboration. The possibilities are nothing less than exciting.
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