By Jack Redfern and Matthew Ward via mondaq.com
There are quite a few common misconceptions regarding patenting. Here, we address a selection of myths which are observed on an all-too-regular basis, and provide some tips on how to better work with the system.
There are quite a few common misconceptions regarding patenting. Here, we address a selection of myths which are observed on an all-too-regular basis, and provide some tips on how to better work with the system.
Myth 1: Changing a product by 15% gets around a patent
It's a common misconception that changing a patented product by 15% gets around the patent protection. This could not be further from the truth. Patents protect a product by defining the underlying invention in terms of "essential features". If those essential features are present in a competing product, then the patent has not been avoided, regardless of how different the patented and competing products may seem. It is often possible to develop workarounds to avoid third party patent rights. However, that should be achieved based on a detailed analysis of patent claims. Simply re-designing a copied product to not resemble the original rarely has the desired effect.
Myth 2: Obtaining a patent gives you the right to sell your product
Put simply, a patent does not provide the right to commercialise a product or technology. Rather, patents are designed to provide an exclusionary right, thereby to prevent others from commercialising the relevant product or technology. Regardless of whether you have a patent, there is always a risk that third party patent rights could hinder your commercialisation process. Unfortunately, that is an inherent risk of doing business. To manage the risks associated with third party patent rights, it is possible to conduct various searches. However, those are inherently inconclusive, and many parties favour an alternative approach of building a defensive patent portfolio thereby to provide leverage in negotiations, should a dispute arise.
Myth 3: A patent is only valuable once it is granted
Many applicants are in a rush to have their patent application examined and granted. However, there are many ways in which a pending application is more useful. By way of example, once a patent is granted, the claims are settled and it is possible for third parties to develop workarounds with greater certainty. However, whilst an application remains pending, there remains flexibility to adjust the scope of protection sought, thereby to capture attempted workarounds. Furthermore, at least in Australia, damages for patent infringement back-date to publication, further reducing the need to rush through the patenting process. Ideally, the approach is to have both enforceable rights and a pending application, and a number of strategies are available.
Myth 4: All patents are equal
The value of a patent is often more closely linked to the quality of the patent specification than the quality of the technology. A poorly drafted specification can significantly detract from the ability to successfully enforce a patent, or otherwise use it as a strategic tool. Unfortunately, the desire to contain costs at an early stage leads many parties to skimp on the quality of an initial patent specification. This often leads to regrets in subsequent years, especially where that specification becomes the basis for a number of applications worldwide.
Myth 5: It's crucial to protect your technology worldwide
Trying to obtain patent protection in too many jurisdictions is a common mistake. It is by no means necessary to file applications in every jurisdiction where there is a plan to commercialise, and one should be particularly mindful that costs rapidly escalate as more jurisdictions are selected.
A good place to start is by considering whether having a patent application in a particular jurisdiction will actually be of substantive assistance when commercialising in that jurisdiction. Sometimes, it is possible to simply ride off the back of success in other jurisdictions.
Often it is far better to have several applications pending in a small selection of key markets, rather than a single application in a larger number of markets. This is the case both from a risk management perspective, and an enforcement perspective.
The local and international patent systems are notoriously complex, with many pitfalls for inexperienced players. Accordingly, it's always important to ensure you are receiving the best advice not only to have the applications prepared, but in developing the strategy that underpins your patent portfolio and which directly supports your commercialisation strategy.
