Holly IP is an intellectual property (IP) consultancy. We act as a patent firm helping you to obtain patents for inventions. However we also give strategic advice on how best to utilise patents, and more generally whether patent protection is appropriate for your business model. We advise on how you can achieve maximum benefit from your patents, and how you can obtain the most effective patent protection with minimal cost.
Top 10 Things That Go Wrong With Patent Applications and Patents
1.Filing the Patent Application Too Late
Developing technology is often a race, and if someone else
gets there first it can then be very difficult to get broad claims.Filing patent applications as soon as
possible should be a priority.
2.Missing a Deadline
There are many many deadlines to follow in the patenting
process.A lot of the work of a patent
attorney is to follow and remind about deadlines.Have a system for knowing all outstanding
deadlines, and perhaps mention them at the end of every email about a patent
case.Deadlines are sometimes missed
when more than one organisation is involved, for example when responsibility
for paying renewal fees is given to another company.Deadlines can also be missed when patent
cases are transferred from one patent firm to another.These are situations where more care than
usual is required.
3.Making the Invention Look Obvious
One should be careful about the way one describes the
relationship between the prior art and the invention in an application.It is easy to make the invention look obvious
when it would not have been at the priority date.
4.Having an Unclear Term in an Independent Claim
If one must rely on a potentially unclear term, then try
and place it in dependent claims, with alternative definitions in the
description.Some Patent Offices can be
very strict on added matter so that deleting a term from an independent claim
could be seen as adding matter.
5.Drafting Claim Scope Too Narrowly
One can always narrow claim scope during prosecution if
one has to, but attempting to broaden claims can cause problems.Claims which are overly-broad can lead to
unity problems though, so careful thought needs to be given to claim scope.Every term in the independent claims should
be looked at before filing to see whether it could be broadened.
6.Not Having Enough Fall Backs
Amendment is almost always needed during examination, and
one must try to consider all the different ways the claims could be limited to
overcome prior art that will be identified in the search.
7.Filing the Application Without Enough Data
In biotech and pharma cases it is quite possible to end
up with the situation where the claims are not adequately supported by the data
or it’s not apparent that the problem has been solved.
8.Publically Disclosing an Embodiment in the
Priority Year which is not in the Priority Application
Ideally no public disclosures should happen in the
priority year, but if they have to, then the priority application should be
reviewed to see whether there is a need to file a supplementary priority
application in view of the intended disclosure.
9.National Phasing in Too Many Territories
National phasing is costly, and therefore one should be
very selective in choosing the territories in which one proceeds.Patent attorneys will not necessarily know
what the best markets are for your invention, and so you should ensure you take
advice from the correct sources.
Abandoning Cases Which Are No Longer Commercially Useful
The portfolio should be constantly reviewed and cases which
are no longer needed should be abandoned as soon as possible.Preferably this should be done before national
phasing to save maximum costs.Resources
spent maintaining cases might be better used filing new ones.