Here in the Dentons patent team we are seeing an increasing number of companies taking on patent portfolios despite having a limited knowledge of patents. This can mean that the company adopts a poor strategy in relation to the management of their IP portfolio, which in turn often results in excessively high costs or poor patent coverage. This post is aimed at covering the absolute basics of patent protection to assist in understanding patents and how they work.
"What is a patent?"
A granted patent is a legal right which gives the owner of the patent the right to stop unauthorized third parties from making, using, importing etc. the patented invention. A common misconception is that having a granted patent enables the owner themselves to use the patented invention This, unfortunately, is not necessarily the case. A patent is a negative right, meaning that it allows the user to stop others from using the patented right. It is does not preclude there from being other earlier-dated patents which the company would infringe if they used the patented invention.
"How do I get a granted patent?"
An application need to be filed at the patent office. A patent application typically contains a description, a set of claims and optionally drawings. The scope of the claims typically defines the scope of protection. Drafting a patent application is a difficult skill and can mean the difference between obtaining a granted patent and the patent being refused. This is why it is normal, and highly recommended, for you to get a qualified patent attorney to draft the application. The application will then usually be examined by an Examiner at the patent office and some communication between the applicant and the patent office will subsequently take place. During this time it may be necessary to amend the claims of the application and/or submit arguments to convince the Examiner that the application is patentable. Only once the Examiner is satisfied that, amongst other things, the claims are novel (new) and involve an inventive step (not-obvious) will a patent be granted. Therefore, when a patent application is filed, there is no guarantee that the application will be allowed.
"How long will it take to get a patent application granted?"
This will vary from case to case but a typical processing time would be 2 to 4 years. There are also mechanisms available in most jurisdictions to speed up processing of the application.
"Is there a worldwide patent that I can obtain?"
In short, no. An applicant must usually apply for a patent and have the patent application examined separately within each jurisdiction they would like to obtain patent protection. There are, however, some regional patent applications available such as a European patent application which can be filed at the European patent office. However, once granted even a European patent separates out into individual national patent rights.
"Where should I apply for patent protection?"
This will vary from invention to invention and company to company. It will also usually depend on availability of funds. But typically countries advisable to apply for protection in would be those in which:
- the product is manufactured or the method is used;
- a significant competitor operates; or
- there is a considerable market for your invention.
We see all too often companies applying for patent protection in considerably more jurisdictions than required – and realising this too late. This leads to excessive expenditure. At Dentons we are keen ensure that you obtain cost-effective patent protection.
"How much does patent protection cost?"
Again, this will vary considerably from case to case and so it is not really possible to provide accurate estimates. But it is important to remember that there are all of the following costs payable in each jurisdiction:
- drafting the patent application;
- fees for filing each application and possible translation fees;
- fees for having the application examined and fees for having your patent attorney respond to any examination reports;
- fees for having the case granted and published; and
- (often annual) renewal fees up to the end of the patent's life.
Are there ways to reduce the costs of my patent portfolio?
In the current economic climate this is becoming important to many companies. Although we would advise a personal consultation, the following are examples of ways to reduce your overall portfolio cost:
- Avoid applying for patent protection in too many countries;
- Ensure that you are working with a competent patent attorney and that you provide them with as much information about the invention and possible future alterations at the outset;
- Making bigger concessions during examination. Rather than arguing every single objection that the Examiner raises, making some concessions will typically help to reduce the time taken before it is allowed by the Examiner;
- When filing new applications look to see whether multiple related inventions could be covered by a single patent application;
- Ensure that your patent attorneys are giving you regular cost updates and estimates, as well as keeping an eye on previous costs; and
- Carrying out prior art analyses before filing an application can help to identify any highly problematic prior art before potentially wasting money on filing an application that is probably going to be refused.
"How long does a patent last?"
It is pretty much universal that a granted patent lasts for a maximum of 20 years from when it was filed. There are some exceptions to this, notably where a patent life may be extended in certain sectors such as in the pharmaceutical sector.
"What do I do then if I have a product that I want to bring to market and I want to check that I'm not infringing any already existing patents?"
A route to market can be verified through a freedom-to-operate analsysis. This is another side of a patent attorney's work. Typically in a freedom-to-operate project a prior patent right search will be carried out and then the results analysed by an attorney in order to check whether the proposed product could be held to infringe an existing patent right.
Now that you have a basics knowledge of patents, if you have any further questions, the team here at Dentons are more than happy to help.