White Space Patenting: Chapter 1




As practiced in our office,1 white space patenting is the process of claiming what the inventor thinks he invented, plus whatever commercially viable alternatives can be claimed, while still falling within the confines dictated by recent Supreme Court precedents.

BLOCKING OUT COMPETITION AT FISHIPLAWManagement and marketing people get this concept immediately. They are not so much interested in what the inventor invented, but in what sort of monopoly can be obtained, i.e., commercial value. Consequently, the question they ask is not what was invented, but what can they stop the competitors from doing.

This may sound like the same thing, but it is not. The traditional approach is invention- or technology-oriented, whereas the true white space patenting approach is market-oriented. This can be readily appreciated using Venn diagrams shown below. Click to download this chapter of White Space Patenting (pdf includes illustrations)


A)Invention-Oriented Approach Versus Market-Oriented Claiming

(1)Market-Oriented Approach Yields Broader Claims

Every invention is really a solution to a problem. Ideally, the inventor would claim every commercially viable solution, which in the following diagram would be the entire space.

Figure 1 – An Invention Is A Solution To A Problem 

It would be nice to claim all possible solutions to a problem, but in most cases that just is not possible. Almost every inventive space is already occupied by at least some prior art (represented by the rectangles) that precludes the inventor from capturing the entire space.

Figure 2 – But Some Solutions Are Already Known

In the diagram below, the invention is shown as a light bulb. The inventor could, of course, simply claim the area occupied by the light bulb. But that is usually a very bad idea because the claimed subject matter is much too small.

Figure 3 – Invention Oriented Approach Focuses On Claiming The Invention

The better idea is to broaden the claims out beyond the inventor’s preferred embodiments as far as one can go, until the “invention” runs into the prior art. But that still leaves a lot of patentable subject matter on the table.

Figure 4 – Broadest Conception of Invention Under Invention Centered Approach

At FishIPLaw™, what we think of as white space patenting is not merely fluffing out the preferred embodiments, but (1) figuring out all of the commercially viable alternatives that are not already disclosed by the prior art, (2) devising solutions that cover those alternatives, and then (3) writing claims that cover the preferred embodiments, plus variations of those embodiments, plus everything else of commercial significance that’s  available to be claimed.

Figure 5 – White Space Patenting Focuses On Everything That Is Left To Be Claimed

Does that make the patent drafter a co-inventor? Some people think so. But the fact is that if the person drafting the patent application can devise all these other solutions from the one solution developed by the inventor, then those other solutions are inherent in the inventor’s conception. In many instances the claimable invention is not how to do something, but the broader idea of doing it!

Of course, covering the true white space can be a difficult task. It requires the patent drafter to be extremely creative, good at brainstorming and drafting claims, and be a good communicator to boot. Conceptually, the coverage resulting from market-oriented white space patenting should look like a bird’s eye view of a golf course, with the claims covering all of the available subject matter.

Figure 6 – Market Oriented Approach Claims All Available Subject Matter

The point is that the market-oriented approach to patenting is simply better than the invention-oriented approach because it produces broader claims

Figure 7 – Market Oriented Approach Is Simply Better

Now it is true that claiming broadly from a market perspective can lead to problems with enablement. Whenever a patent drafter is trying to cover everything in the field other than what is already known, he will almost certainly wind up claiming things that are not readily manufactured using known technology. But that is where the art of patenting comes into play. The application should include real or imagined experiments that enable the far-flung reaches of the claimed subject matter. It should also identify texts and articles that assist in enablement, and incorporate them by reference into the specification. Finally, whoever is drafting the application needs to make sure all bases are covered, using the various claiming strategies discussed in this book.

It is also true that claiming too broadly can run afoul of recent case law, Alice v. CLS Bank, Mayo v. Prometheus, and Ass’n for Mol. Pathology v. Myriad. At this point in the discussion, however, is suffices to say that claiming with a market-oriented approach is almost always better that claiming from an invention-centered approach.

      1. (2)Market-Oriented Approach Provides Clear Strategy To Creating A Patent Thicket

One very useful strategy is to view the technology metaphorically, as fitting somewhere along a generalized flow from raw materials to one or more distributed products. This may seem a bit odd, but even services such as that provided by real estate agents can be viewed as “products”. In that case, the raw materials are listings and potential consumers, and the products are closed sales.

Using an appropriate metaphor, the patent drafter should be able to use a technology space schematic such as that shown in the figure below to identify the technology space that is at least potentially subject to patenting. The trick is to assume that the technology has a counterpart to every portion of the conceptual structure, and then figure out what those counterparts must be.

Figure 8 – Generalized Schematic Of Technology Space

The next step is to consider all of those various counterparts as potential “choke points“ where the competition could be kept at bay. By way of example, consider the technology relating to synthetic threads.

From a materials standpoint, there are many different compositions that could be used to make a synthetic thread. This is depicted graphically below, with patent numbers of exemplary patents in the field.

Figure 9 – Potential “Choke Points” For Raw Materials

When viewed in this way, the reader should immediately appreciate that the various inventors secured their patents using an invention-oriented approach. Any one of them could have locked up the entire field by contemplating and then claiming all the various possible classes of raw materials. That would have involved patenting from a market-oriented approach — but no one did that. They could also have used the market-oriented approach to lock up all commercially viable manufacturing equipment and processes, final products, distribution schemes, and so forth. But they didn’t do that either. Instead, they narrowly focused on specific inventions.

Figure 10 – Potential “Choke Points” For Manufacturing 

The bottom line is that in drafting patent applications, one should view any given invention as a piece of a much larger technology space. One should map out the entire space from raw materials to distributed end product, figure out all of the remaining patentable “white space“, and then claim everything that is left to claim. That is the essence of true white space, (i.e., market-oriented) claiming.

      1. (3)It Is Not Necessary To Cover Every Possible Embodiment

One important caveat here.  Although it is nice to write patent claims that cover every possible embodiment in the white space, it is not always necessary to do so. First, the primary goal of patenting is merely to cover commercially significant embodiments. Second, even if claims fail to cover all such embodiments, it often suffices if they cover some embodiments that are especially desired by the marketplace. For example, assume that someone invents an automated license plate reader for use on highway patrol cars. If the prior art systems can read license plates on cars moving in the same lane as the patrol car, or on parked cars in adjacent lanes, an applicant cannot now claim a system that covers all license plate readers. But he doesn’t have to. All he has to do is claim systems that read license plates on cars (1) moving (2) in other lanes. Given a choice of the prior art system or the new system, police departments will very likely choose the latter.

Now, should the applicant also include a dependent claim to additionally read plates in the same lane? Yes, absolutely. That way, a competitor would infringe the independent claim for a system that read plates only in moving cars in adjacent lanes, and he would infringe both independent and dependent claims for a system that read faces in moving cars in both adjacent and same lanes.