Patenting an invention in the United States involves more than just safeguarding what I’m currently building. Sometimes, a strategic move is to prevent others from obtaining patents on related ideas—even if I’m not ready (or able) to patent those inventions myself. Below, I explore my unique tactic: “patent what you can, and block everyone else from patenting what you can’t.”
1. Why Go Beyond Your Core Product?
Traditional Approach
Most inventors file patents strictly for the product or process they plan to market soon.
Forward-Thinking Approach
I recommend disclosing not just your current invention but also potential future developments—even if you’re not 100% sure how to implement them yet. This prevents others from securing patents that could block your product roadmap.
2. The Tiers of Patenting
What we are doing
Protect the innovation you re actively developing. These claims cover exactly what you do right now.
What we plan to do
If you have features or improvements you plan to add soon, disclose them so you can patent them.
What we can enable
Even if you have no immediate intent to build it, including related inventions can prevent competitors from patenting them later. This is often the case in fast moving technology areas where there are dozens of possible directions where consumers might create demand. If you know how to predict and practice inventions in those directions, disclose them now so you can patent them later – but you don’t need to try to claim them if it becomes clear technology is heading in a different direction. You often know the direction it is heading before you even get your first office action on your core claims.
What we can’t enable but don’t want to pay others to license
By mentioning an idea in the specification (remember, you can’t enable it, meaning you can’t turn it into an invention, so it is actually an idea), you render it part of the prior art—making it harder for competitors to patent it. This technique leverages how the U.S. Patent and Trademark Office (USPTO) treats prior art references asymmetrically (not officially, but in practice). If I invent a new method to turn a widget into a super widget, I can patent it. I can also imagine using additive 3D printing to convert the widget, but I can’t figure out how to implement it. I can say in the specification “In one aspect, the method is accomplished using additive 3D printing.” That is far from sufficient to enable it, but a patent examiner searching for prior art on my competitor’s patent filing could put together a 103 obviousness rejection saying “Smith discloses using additive printing on an existing 3 dimensional object. Shuster discloses turning a widget into a super widget. Shuster also teaches that this can be accomplished using the additive printing that Smith now discloses. As a result, it would be obvious to a person having ordinary skill in the art to combine the teachings of Smith and Shuster.” Boom, no patent for you.
The asymmetry with which a patent specification is analyzed for enablement (person having ordinary skill in the art can build it) and with which a specification is used as prior art (you just need to show that combining X and Y would occur to a person having ordinary skill in the art) means that you can block patents from issuing in the future easily, even if you can’t enable the invention you are blocking yourself. I know, I know. My fellow inventors are thinking “That’s so unfair!” It isn’t. If it was obvious to me to combine X and Y and I say it in a publication, I’ve told the world that those things can be combined. I rendered it obvious. If we want the USPTO to issue high quality patents that we can enforce, we need to accept that it will reject patents that are low quality. The fact that it is being done strategically does nothing to reduce the validity of the obviousness argument.
3. Practical Benefits
Block Competitors
If a competitor tries to patent a feature I’ve mentioned—even in passing—they may find it rejected as “obvious” or already disclosed.
Protect Future Generations
By disclosing a wide range of possibilities, I ensure my company won’t need to license (or sidestep) future patents that could lock up improvements I plan to implement later.
Strategic Advantage
This approach balances my immediate need for patent protection with long-term positioning, sparing me from surprise obstacles years down the line.
4. Key Takeaways
- Patent Thoroughly: Cover my current invention and near-future developments.
- Disclose Broadly: Mention related concepts—even if I lack full enablement—to create prior art.
- Prevent Licensing Fees: By anticipating my product’s evolution, I block potential patents that could later hold me hostage.
- Use USPTO Rules Wisely: The difference in enablement and obviousness standards is a powerful tool to keep my roadmap open for growth.
Want More Details?
Watch the accompanying Innovation Cafe video, where I explain my patent-filing strategy in plain English—and how it can save you from costly patent licensing in the future.
Note that this is a bit of the “secret sauce” for patent success. If you need help implementing it, reach out to me.