“When developing a strategy for building IP protection around an emerging technology, it’s helpful to have a framework for seeking a diversity of protection that spans the core technology and applications of it.”
To anyone mildly involved in developing intellectual property assets, the title of this article seems patently obvious. Yet, in today’s world of data driven Key Performance Indicators (KPIs), it is all too easy to chase patent filing and issuance counts rather than focus on enduring IP value. Patent metrics alone don’t build value. This guide shows how to build litigation-ready assets.
Simplified, a patent right is the right to exclude others from commercializing an invention. If no one uses the invention as described and claimed, it has no value. If it’s difficult to discover whether an accused technology infringes the patent, it will be difficult to extract value. Worse, it may reveal valuable know-how that is better protected as a trade secret. Finally, if the patent is subject to multiple validity challenges, its value is compromised.
Valuable patents are enforceable, strategically relevant, and resistant to legal challenge. This requires strong claims, clarity, and foresight. A litigation-robust patent is characterized by its careful drafting and prosecution, constantly considering validity challenges and patent valuation.
Portfolio teams must align legal, technical, and business strategy to convert patents from KPIs to competitive tools.
Continuously Create High Value Patents
Having a fundamental understanding of relevant prior art and the competitive landscape is critical. This is not a static, one-off exercise for each patent, but instead a dynamic, ever evolving exercise performed across the patent life cycle, from first filing to building a patent family.
1. Develop a Comprehensive Protection Strategy Using the Network Stack Framework
When developing a strategy for building IP protection around an emerging technology, it’s helpful to have a framework for seeking a diversity of protection that spans the core technology and applications of it. One way to think about this is to use the analogy of the network stack. The network stack is a way of describing layers of network functionality, including physical, network, transport and applications as shown in Fig. 1 below.
Here is the simplified diagram of the four-layer network stack:
Table 1 illustrates a summary of the mapping of network layer to the target patent features and example claim types.
In the context of building high value patents, this network stack concept helps guide thinking toward a diversity of ways to protect a core innovation. The idea is that each patent should be built with the intent of protecting an invention in all its various forms and uses. The physical layer in this analogy is the core enabling technology. The network layer is a layer covering how that core enabling technology interacts with other system components. The transport layer covers optimized structure and operation of the technology, like optimized communication, data structures, and the like, that facilitates interactions in the network. Finally, the application layer covers key use cases of the core technology.
Though it may not seem intuitive at first, this analogy is applicable across diverse technical domains. Upon closer examination, a proposed invention, whether mechanical, electrical, material science, biological or software, can be dissected into a core enabling technology, its operating environments, optimizations, and use case, all of which reinforce each other. The first step in the analysis is to identify the core enabling technology. The next step is to identify the system-level context in which the core technology operates. Next, the framework motivates thinking of the various optimizations of the innovation within these systems, including adaptations of the core technology for various use cases. This framework stimulates thinking about how the core technology is going to be embodied, and how it will be used and by whom. In turn, this thinking lays the foundation for creating a diversity of claims and claim scope.
The approach complements traditional problem-solution analysis and anticipates future embodiments and markets.
The network stack framework also drives a coherent and complementary strategy for managing trade secrets. Patent and trade secret protection, when viewed at the portfolio level, are not mutually exclusive. Layers of the stack may be more amenable to trade secret protection. For example, they are post filing optimizations, security features, or difficult to discover implementation details in a potentially infringing technology, all of which are candidates for identifying and protecting as trade secrets.
2. Create and Maintain a Dynamic Chronology of Prior Art
Having expanded the context of an invention into a network of innovations, the portfolio architect can now more effectively apply this perspective in the critical analysis of the prior art and competitive landscape.
Developing a dynamic chronology of significant developments in the technical space of a company’s portfolio is a critical tool for building high quality patent assets. This exercise extends beyond the traditional role of a patentability search in a couple of respects:
- It is a dynamic resource updated as prior art surfaces through the lifecycle of building a portfolio around a technology space
- It informs portfolio development around a diversity of invention across the network stack
An effective way to build a dynamic chronology is to develop a database of prior art with commentary on technical contributions significant to the technology space of interest. As the portfolio grows, it will inevitably spawn new chronologies around adjacent and emergent technologies. These can be tracked by classifying technologies in the portfolio and tagging prior art with relevant classifications. If old fashioned human review is intractable, one can apply AI-based classification tools to classify art and portfolios.
AI prosecution tools can be significantly more valuable in creating litigation-robust patents by feeding them the most relevant context. The dynamic chronology supplies that relevant context, which sharpens the drafting of background sections, specifications, and claim sets, and pre-empts prior art rejections.
It simplifies cross-citations and flags obviousness-type double patenting risks. See: Allergan USA, Inc. v. MSN Laboratories Private Ltd., No. 2024-1061, __ F.4th __ (Fed. Cir. Aug. 13, 2024).
The dynamic chronology also reduces the impact of fee increases associated with large information disclosure statements. Conventional wisdom for litigation-robust portfolios suggests extensive cross-citation of prior art for each application in a patent family. However, if portfolios are constructed with a diversity of claims, such as leveraging the network stack paradigm, it may be counterproductive to cite art solely because it was cited in a family member. Therefore, having a shared resource where patent prosecutors can efficiently assess and cite the most pertinent art helps to mitigate invalidity risks without significantly increasing the overhead required to comply with disclosure requirements.
3. Continuously Monitor the Competitive Landscape
Just as the dynamic chronology is essential to tracking where the market has been, the portfolio builder must also have a finger on the pulse of the competitive landscape. This drives claim development that is most relevant to the market, not only where it is at any moment in the patent lifecycle, but also where it is going. This visibility on market evolution enables claims to be adapted during prosecution. It also enables the portfolio strategist to identify disruptive threats and consider how those threats can be mitigated. Mitigation strategies include adapting claims to target threats and sharpening identification of evolving competitive advantage. The network stack strategy sets the foundation for evolving the portfolio.
Monitoring tools have been a staple of IP services for some time, and AI enhancements will only make these better and easier to use.
4. Building Robust Patent Specifications
To create a foundation for litigation-robust patents, patent specifications need to be built to be resilient to surfacing of prior art and pivots in the market. An effective way to do this is to create a hierarchical and modular description of innovative components that flexibly enable support for variety of claim scopes across the diversity of innovations. A paradigm like the network stack can facilitate this approach by enabling the portfolio strategist to outline the core innovations, modularize them, and explain how they interact with other components in system implementations.
A typical strategy to leverage a robust specification is through the well-known practice of filing continuation or divisional applications. The ability to do this varies across jurisdictions due to variations in claim support rules. A common denominator is that drafters need to anticipate pivots and include exemplary claims to preserve options.
To build resilient patent specifications:
- Modularize innovations into interchangeable technical components.
- Describe each module with multiple levels of granularity.
- Link high-level functional descriptions to detailed “how-to” implementation pathways.
- Consider including exemplary claim variants (means-plus-function vs structural).
Though this approach maximizes flexibility, it often requires constructing levels of generalization that invite attacks on functional descriptions. These attacks include eligibility concerns, where the drafter takes short cuts using high level functional terms that do not provide sufficient detail of the “how” a technical result is achieved. Longitude Licensing Ltd. v. Google LLC, No. 24-1202 (Fed. Cir. Apr. 30, 2025). This also invites a validity challenge that functional claim terms invoke means or step plus function claiming without sufficient corresponding structure. Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) and Fintiv, Inc. v. PayPal Holdings, Inc., No. 2023-2312 (Fed. Cir. Apr. 30, 2025).
By defining the “how” of the innovation within a module, the drafter provides flexibility in claim scope and has a mapping between claim terms deemed functional and corresponding structure in the specification. Further, drafters have the flexibility to expressly use means or step plus function triggering language in some claims, and not in others, which widens claim diversity. See: “Advanced 112(f): A Means for Winning for Patent Litigators and Prosecutors” (August 2023).
5. Use Omnibus Specs Strategically
The above recommended strategies, combined with the desire to capture innovations early and often, tend to lead to omnibus specifications. An omnibus specification is one that has depth and breadth across a core innovation and key use cases. It is built to support claims to a hierarchy of innovations, with their inter-changeable components and applications. The intent is to provide enduring support to spawn foreign counterparts, continuation and divisional applications.
The concept of filing early and often is key because it helps establish earlier filing dates with provisional applications, which are ultimately combined into the omnibus specification for non-provisional and international application filings.
Omnibus specs capture broad innovations but may delay claim issuance, add expense, and overcomplicate claim support. Thus, it is advantageous to balance the portfolio with shorter, targeted filings on portions of the network stack, or consider filing multiple applications at once with distinct claim sets. The network stack paradigm is useful for either omnibus or targeted specification drafting.
6. Audit Claims for Enforcement and Extraterritorial Gaps
Even with a well-crafted specification and clever claim diversity strategy, there remain pitfalls that can sap the value of a patent. One pitfall is losing track of who the direct infringer of the claim is. For example, one might initially intend to build claims targeted at would be competitors yet be limited in that the infringers are end customers. Relatedly, there may be a divided infringement problem, where the combined acts of two parties are required to infringe a claim.
Another pitfall is not thinking through potential extra-territorial issues, such as whether the elements of a claim are performed within the territorial reach of a patent, or whether there is an ability to collect damages for acts abroad. Consider crafting system claims from the perspective of the service provider and user. See: NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005). “The use of a claimed system under section 271(a) is the place at which the system as a whole is put into service, i.e., the place where control of the system is exercised and beneficial use of the system obtained.”
Another tool to help mitigate at least some of these concerns is the use of claim language that forms the claim environment but not a claim element, where the environment carries patentable weight, yet need not be practiced by the direct infringer. Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292 (Fed. Cir. 2011).
Synthesize Strategic Tools for Litigation-Ready Patents
By putting in place the above outlined internal processes and drafting frameworks, the portfolio architect can produce a broad and deep portfolio of litigation robust patents. The dynamic chronology and competitive monitoring processes build a deeper understanding of a technology space and opportunities for maximizing claim value. With this in hand, frameworks like the network stack paradigm enable creation of a hierarchy of innovations from core enabling technology to application.
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Author: gustavofrazao
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