“I don’t want to give a report with zero results to the client.”
It was a beautiful, cold October morning. I was sitting at my desk sipping my latte when I received a mail in my inbox. It was the notification of a project we just landed from one of our client Nick, who consulted us after a long gap. He wanted us to work on a detailed Infringement analysis of one of his patents.
After spending a good amount of time on the project, I came to the conclusion that there are very few chances of complete overlap because of few limitations present in the claim. However, somehow, there was something ticking in my head which said there has to be something somewhere that uses this technology.
So, I kept checking and re-checking the products to ensure I haven’t missed anything. During this process, I had one thought in my mind – I don’t want to give a report with no results to the client when I strongly believe that there should be something out there in the market.
Anyway, I went back home and over the weekend when that ticking didn’t stop, I just thought what if I search from the perspective that I have to find something that can help the client achieve his objective (not necessarily the overlapping product).
Then and there I opened my laptop and executed a few searches. I came across a feature from a major social networking site that appears to be related to the patent, however, the feature was still not overlapping on the claim completely.
I then thought my main objective is to help the client commercialize his assets. If he cannot make money in the current situation, due to some limitations in the claim, his core invention still has the potential to make money. So I should give him a solution that can help him achieve his objective.
What was the solution?
I suggested to Nick that if we can file a continuation and amend the claim such that the social networking site can overlap, this patent family can be turned into a valuable asset. He had a pending publication in the family that enables him to file a continuation. I tried proving my point by giving support from the patent description for a possible claim amendment such that the original novelty of the parent patent is preserved.
What is the difference between only sharing results and providing consultation?
Ø Sharing Results Only – In this case, I could have simply shared that there are no overlapping products. I may have added search observations on how the claim limits the invention and which features are not available in the product.
Ø Providing Consultation – Instead I showed how the social networking site is related and suggested to look for the possibility of filing patent continuation and amend claims such that the networking site can overlap.
Did our consultation help Nick?
Yes, he actually took our advice and took steps for filing continuation. Based on our suggestion, now he is working on the claims. He even sent us an amended claim before filing to ask if it now overlaps the social networking site feature.
How did it create a difference?
Our main objective is to help the client achieve his objective. If we limit ourselves to the just tasks then we will miss a lot of opportunities where the output of the tasks is not favorable to the client’s objective. Therefore, caring for whom you work is very important.
The story does not end here. Recently we found that a major tech giant has also started to adopt similar functionality in its site as we found in the social networking site. So, we shared a follow-up with the client to inform him about the same. He thanked us in response. The objective is caring for the client even after the project is over.
You see, some extra effort reflecting genuine care and consultation definitely makes a difference.
Authored By: Vincy Khandpur, Team Lead, Patent Infringement
