All too often fledgeling businesses invest in securing patent protection without fully understanding the role of a patent and the risks involved in attempting to obtain one. A patent does not give its owner the right to use an invention only the right to prevent a third party from using it without permission. Due to a patent’s ability to exclude businesses from developing technology in a particular area, it is not surprising that competitors may try to revoke or amend your patent to remove any barriers it represents to their business. Strong competitors will not be intimidated by patents that stand in their way, and many patent owners do not realise that it is possible to have their patent revoked even after it has been granted.
Related: How to make a patent application
For example, in the UK, prior to grant, a patent application can be objected to at the UK Intellectual Property Office (UKIPO) by examiners discovering a previous incarnation of the same or a similar invention. Even after a patent has been granted, it can still be challenged via revocation proceedings before the court or at the UKIPO. If a technology is valuable and forms a major part of your business, establishing a robust patent portfolio is vital, and all it takes is a little extra work up front.
One of the most common causes of patent revocation is a failure to invest enough time in making the initial application as strong as reasonably possible, at the start of the patenting process. All too often companies cut back on costs at the preparation stage only to find they spend far more later on in defence of their patent.
It is common for similar, earlier inventions (referred to as prior art) to come to light and to be used to invalidate the asserted patent claims. Having a well-drafted patent application from the outset puts you in the best possible position to deal with issues that arise due to the discovery of these earlier prior art references.
One way to reduce the risk of prior art being discovered mid-way through the patenting process is to do some initial research. Pre-filing searches, although not comprehensive, can give you some idea of what others have done before and how new your invention really is.
The search results can be used to strengthen the validity of your initial patent application or identify potential problems that are likely to occur further down the line. If your budget does not allow for a thorough pre-application search, give your patent attorney as full a picture as possible of what led to the development of the invention, how it differs from the competition, and all the ways in which the invention will be exploited commercially. This will enable them to take these factors into account when drafting your patent application.Carrying out regular intellectual property (IP) searches related to your business will enable you to keep an eye on your competitor activity by flagging up possible future problems relating to infringement. Regular research can have the added advantage of revealing potentially useful technology, such as patents which are no longer in force or are about to expire. A detailed knowledge of the emerging technology in your field will assist you in directing your research into innovations into virgin territory rather than into an already saturated market. It can also identify opportunities for co-operation with the owners of complimentary technology.
If patenting an invention internationally, be aware that significant differences exist within the execution of IP law around the globe. Some patents are inherently stronger than others in different jurisdictions. For example, patents relating to software or business processes are commonly granted in some jurisdictions and often considered to be excluded from patentability in others.
To ensure that you have the strongest possible patent portfolio, you will need to establish a considered international IP strategy, and invest in the subtle adaptation of international applications, by adapting the patent applications to complement the local variations of IP law to enhance the prospects of gaining the strongest possible protection under the sometimes conflicting laws of each respective country. Unfortunately, there are no guarantees with patenting and taking the above steps will not guarantee that your patent is not attacked. They will, however, reduce the risks to your business and put your patent portfolio on the strongest possible footing should you need to defend it.
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