Wednesday, 30 October 2013

Top 10 Misconceptions About Patents

1.  The Claims as Filed will be the Claims as Granted

A surprising number of people are not aware of how much amendment of the claims often happens in examination.  They may therefore obtain a licence for a case soon after it is filed, and be surprised when its scope is limited before grant.

2. A Patent Attorney Drafted the Patent Specification

It is very possible that a patent attorney was not involved in drafting the specification in order to keep costs low.  Whilst this seems rare for UK originating cases, it is something that should be looked out for in US originating cases.  If a non-specialist drafted the case there will be a possibility that the invention has not been defined properly in the claims and sufficient fallbacks have not been introduced for amending the claims during examination.

3. Before Filing Someone Has Determined that the Claims Cover Patentable Subject Matter

No assumptions should be made about this.  Sometimes no one involved in the drafting process has searched in any way for relevant prior art.  Instead the patent application may simply have been drafted based on how the inventor(s) described the invention.  Further certain types of subject matter, e.g. software and business methods, are not patentable in every territory, and this aspect of the invention may not have been reviewed properly.

4. The Invention is a Fixed Concept

People assume that the invention is a given concept, and if that concept has been disclosed in the prior art then a patent cannot be obtained. However often inventions are better thoughts of as a set of broad to narrow concepts, and if the broader concepts have been publically disclosed, it may be possible to get a patent for narrower concepts.

5.  Filing a Patent Application Before Others Prevents Others Getting a Patent for the Invention

As discussed in (4) above, an invention can sometimes be like a series of concepts.  Therefore if you get a patent to a broad concept, it is still possible for other parties to get a narrower patent within your concept.  So if you have a broad patent covering ‘Use of X to perform Y’, it may be possible for someone to subsequently obtain a patent covering ‘Use of X to perform Y, where the temperature is 0 to 10⁰C’.  If the invention is only commercially valuable within that temperature range the narrower patent will cause problems for you.

6. No Patent Protection is Possible Once the Invention is Publically Disclosed

Many territories have grace periods for public disclosures which originate from inventors. That includes important territories such as Japan and the US, though not unfortunately the UK and the European Patent Office.  A grace period is often 6 months or a year from the disclosure and essentially means that the inventor’s disclosure does not form part of the prior art when assessing patentability. However different territories have different rules for how to take advantage of the grace period and attorney advice will need to be taken if reliance on a grace period is required.

7. Obtaining a Patent Gives Freedom to Operate                   

A patent is a negative right.  It does not give a party any right to practice the invention and override other patent rights.  Often a given product or activity can be covered by more than one patent, for example broad and narrow patents as discussed in (5) above.  Therefore a freedom to operate search will always be needed to identify all relevant third party patent rights.

8.  A Granted Patent Is Valid

Different Patent Offices have different standards for examining patents.  The USPTO and EPO are quite strict, whilst the UK IPO is generally more lenient.  Therefore there are different levels of ‘presumption’ about the validity of patents granted by different Patent Offices. Further Patent Offices are not always able to identify every relevant prior art document in their search, and therefore, for example, there is always the chance a patent is not valid because of the contents of a prior art document which has not yet been found.  Patents are often found to be invalid in opposition and court proceedings.

9. Others Will Respect Your Patent Rights

In general third parties are wary of infringing patent rights.  However if they believe the patent is not valid for any reason, then they may risk infringing it on the basis that during court proceedings they will be able to succeed in the having the patent revoked.

10. Patents are Worth a Lot of Money

Sometimes the assumption is made that once one has obtained a patent, it is valuable.  It is usually difficult to estimate the value of a patent application or patent.  The actual value will of course depend on the commercial worth of the subject matter they protect.  However, crucially, there may simply be no party wishing to purchase the patent case, and so no money can be made from it.  If the commercial goal is to sell or licence the patent case to third parties, it would be advisable to review how attractive the patent case would be to third parties before spending resources on it.

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