It is important to realise that a lot of decision-making is
needed during the patenting process to create the strategy which is most suited
to the commercial requirements. Too
frequently adequate thought is not given to each decision resulting in
inadequate patent protection, too much patent protection and/or too much money
being spent. One should see the
patenting process as one which involves constant review and decision-making,
and patent attorneys should only be one component in decision-making amongst
others familiar with the relevant commercial objectives. The following points
do not represent an exhaustive list, but are more based on the situations we
have encountered when working with our clients.
1. Treat Each Patent Case
Differently
Often companies will take the same approach to every
case. However the chances are that some
cases are more important than others.
Resources should be allocated to each case depending on its
importance.
2. Ask Why Each Case Is
Being Filed
The reasons for filing each case should be reviewed,
especially its commercial value, whether it can be effectively policed and the
short term and long term objectives.
3. What Claims Do You
Want?
There should be a review of what claims would be desirable
to have in that technology area and how possible it would be to obtain them
from this case. In one sense this is a review which is semi-independent of the
scientific work that forms the basis of the case. One reason for doing this is to see if the
claims can be broadened to include competitor activity or other ways of
carrying out the invention.
4. How Much Money Is
Available?
The company needs to make decisions on each patent case
depending on how much money is available both now and over the lifetime of the
cases. Patent costs increase with time
and so there needs to be some expectation that future patent costs can be met
before proceeding with a cases.
5. When To File?
In certain areas, such as biotech and pharma, cases are
often filed too early with not enough supporting data. There needs to be a balance with how much
data goes in and the need to have an early filing date. Clearly, knowing about competitor filing and
publication activities will help you to make an informed decision.
6. How Much Disclosure
To Include in the Specification
This is seldom thought about properly. However the amount of disclosure will
directly affect translation costs at national phasing. Clearly a certain amount of disclosure is
needed to provide support and be the basis for amendments. However exhaustive lists of expression
vectors might not be needed.
7. Who Will License
or Buy the Case?
Thought should be given to the commercial needs of parties
that may be interested in licensing or buying the case. Their commercial objectives may be different
to yours and the claim scope should be determined in view of that.
8. Is It Likely to be Challenged?
If it is likely that third parties will challenge the
validity of the case in opposition or litigation then the validity of the
claims needs to be critically reviewed before grant to ensure they will
withstand a hostile attack. Normal
Patent Office examination may be too lenient in this situation to obtain the
most robust claims.
9. Action Against Third
Party Cases
Decisions need to be taken as to the extent to which third
party cases need to be monitored and whether action needs to be taken against
them. It may be better to agree an
amicable approach with a third party rather than resorting to attacking their
patents.
10. Whether to litigate?
Whether to litigate is a complex decision that will be very
much determined by the amount of money at stake and the predicted chances of
success. The emotions of the present
moment should not be a factor in deciding to start a litigation that may run
for several years.
You may also wish to see related articles Advice
to a Scientist Setting Up a Company and 10
Things That Go Wrong With Patent Applications and Patents.
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