A design-centric approach – a new way of thinking about patent drafting

Article | 2 February 2021

A design-centric approach – a new way of thinking about patent drafting

A design-centric approach – a new way of thinking...

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The problem with preparing a patent application

As patent attorneys we often receive information about an invention after the invention has been fully conceived. This information is then used with further dialogue between the patent attorney and the client to prepare a patent specification that aims to fully describe the invention.

A patent can only be prepared in a way that sufficiently discloses an invention if the invention has first been described in full to the patent attorney. This requires the patent attorney to gain an understanding of the context of the problems that the invention addresses, which is often provided by the client.

Although this process is used to prepare many patent applications, it has its shortcomings. Most notably, the questions asked by the patent attorney about the invention are dependent upon the patent attorney having enough understanding of the invention and its context. However, to gain this understanding, the attorney is relying on the client to fully describe the key aspects of the invention. Details that seem minor, insignificant, or trivial to the client or inventor may be important to the patent attorney.

If the client does not provide sufficient information about the invention, the patent attorney may not be able to fully describe the invention or, worse still, not fully appreciate and understand the invention. This means that it may become difficult for the patent attorney to ask the client the right questions, as the attorney cannot ask questions based on what he/she does not know. For many clients, they can also be too close to the invention to see “the trees from the forest”, and this is especially true if the information is coming from the inventors.

A patent attorney should understand the limitations of not having at their disposal all of the information about the invention and how to overcome these limitations. However, this often requires greater time and attention to communication between the patent attorney and the client, which is inefficient, costly, and does not always result in a complete understanding of the invention. It may also fail to provide the patent attorney with an adequate picture of the past and future research and development, and the context of the invention.

Design-centric approach

Another approach is to use a ‘design-centric approach’ which puts the design of the invention at the center. A design-centric approach ensures that an active working relationship between patent attorneys and designers, with the patent attorney involved in the invention design process earlier and in a more active way. The result is a level of understanding and strategic enablement that helps to resolve the shortcomings in traditional approaches used to prepare patent applications.

Design is a process that uses a broad base of knowledge and empathy to develop a product, interface, service, or ecosystem in consideration of the user-experience. Effective integration of patent and design processes begins with a collective understanding of the progression of design work, and this understanding is used to develop a framework to provide patent-related information to the patent attorney, and guidance to design based on what is specifically needed at all stages of the process.

This thinking allows a patent attorney, or person acting as the conduit between the patent attorney and designer, to make a valuable contribution to the design team. This contribution helps the designer to add even more value to the design and can help to shift overhead patent costs to innovation development. And importantly, the patent attorney is provided with, in almost real time, all the insight gained during the design process, which leads to better, more valuable patents built directly around the key features of the invention.

The result of a design-centric approach is greater design insight, a known path to valuable patent protection, a clearer IP protection strategy, and better outcomes for the client.

Rapid360™

The Rapid360™ network is a network that includes designers, commercialisation experts, financial advisors, and IP advisors, which puts the client at the centre of innovation and commercialisation.

From the view of a patent attorney, Rapid360™ helps to ensure that the product design, commercialisation strategy and finance are aligned with one another, which makes it easier to formulate a patenting strategy that provides value to the client. It also helps to provide near real-time updates on where the client is up to in each of the modules that make up the Rapid360™ process.

For example, if, during the procurement of manufacturing capabilities, it is discovered that a component needs to be manufactured in a particular way, this can result in a redesign of the component. As a patent attorney, having access to these developments in as close to real-time as possible helps to ensure that the IP strategy is developed congruently to the other commercialisation modules. It also helps to provide a richer background to the development of the invention.

More importantly, Rapid360™ pulls together the design and patenting processes to allow for a design-centric approach. The design-centric approach allows concurrent IP strategy development and design development, with lateral communication between the patent and design sides to leverage both patenting and design process to extract as much value as possible for the client. This results in a design that has its IP protected, is commercially viable, and ultimately has a greater chance of commercial success

Author

Steven Starkie

Partner, Australia