A patent is a specialized tool provided by the legal system of various geographies to inventors/applications to bear fruits for their innovations/investments without a fear from a competitor to blatantly copy the invention carried out by them. It is to be notified, the companies invest heavily on research and development, and in a fear of losing out their investment on research, they may cease to put efforts on carrying out research, and which may affect the society at large. Surely, in such scenario, no electricity would have been developed, and a lot of medicine would not have seen the face of the market.
The Patent ecosystem
It is to be noted that Patents is not just a tool, it is rather an ecosystem. The inventor/investor gets protection for their base technology; however, it also leads to disclosure of the base technology to the society. Now the society has an opportunity to utilize the wisdom from the base technology to innovate further and to bring out incremental technologies or alternative technologies, and of course, they can protect their position by protecting these incremental or alternative technologies.
Let us explain a bit more about the ecosystem of the Patents and its players. Generally, the whole ecosystem has Investor, Inventor, Competitor, the End user. Generally, the Investor is the Patent Holder who has invested in the development of the technology and has commercial rights over the Patent. The inventor is the person who has developed the technology and he may be an employee of the patentee, or a contractor of the patentee, or the patentee himself. The competitor is the person who follows the technology generated by the patentee either by directly using the technology of the patentee to infringe the patent or tries to re-engineer or workaround the patented technology to avoid infringement to the patented technology. The end user of the technology is mostly the consumer of the products or services developed using the patented technology.
Patent Holder’s concern himself is always to be a leader in the market technologically, and thus he focuses on the creation of a substantial patent portfolio around the products developed by himself. Accordingly, he takes up various initiatives in research and development to focus on the development of various solutions to the problems suggested by the end user or identified through self-wisdom, or other market sources. Once the problems are identified, they move into paper research mode, to identify the technology landscape or state of art around the referred problems, so that they can understand how other competitors have moved ahead to solve the similar problems.
Sometimes, the prospective patentee tries to move into a birds’ eyes analysis to see where the Picture of Future is moving, i.e., which all technology areas shall be booming in near future. The investment in futuristic technologies are quite important, otherwise, it may lead to similar problems where Kodak and Nokia had lost their battle. However, it is always better to check out how the Technology landscape looks for such futuristic technology areas, to identify if there are competitors already moving in for such technology areas via Competitor Analysis, how much Technology landscape is covered by the players using White Space Analysis, etc.
Once, they identify a technology area to move, and further conceptualized the technical solutions focusing on various problems and open white spaces in technology landscape, another important point comes up to check out whether the solution which they have conceptualized, whether they are Free to Operate (FTO) with such solution, in a particular geography, i.e., whether they can manufacture, promote and sell, the product based on patented technology in a particular market. It should be noted, even though the technology developed is new and patentable, it may still be infringing an already patented technology, i.e., the newly developed technology can still be read into the claims on an existing, and valid patent claim, which is still in force. It is an important consideration to do a Freedom to Operate exercise to be done as early as possible, before investing substantial over development of particular technologies, a mechanism to overcome such patent infringement may be fairly costly, and may cost the company its existence, as the damages underlying may lead to closure of the company.
Once, it is identified that the Company is really interested to take the newly developed solutions ahead, it is always important to build an appropriate patent portfolio around the technology solutions developed. It should be looked into how much patents are required to be filed to aptly and broadly cover the solution, so that to overcome “unity of invention” objections from the patent offices, and easy re-engineering and workaround of Patent Claims by the competitors. Also, even before investing over building the patent portfolio, each invention which has to be filed as a separate patent application, should be checked through prior art or novelty or patentability searches, so that the scope of the invention should be clear to the patent writer or drafter. This provides for a fairly balanced approach of building patent portfolios and writing patent applications which can be effectively defended at later stages during objections, oppositions, and litigations, and also keeping the cost minimal for building and protection of the patent portfolio.
One important aspect while developing the Patent application is to get it properly proofread them so that the formality objections should be minimal. Also, the Patent drawings should be developed by a professional patent illustrator who takes care of formalities in drawings required by the Patent Offices. The size of the application should also be given significance, as it may result to additional cost in terms of number of claims, number of pages, and translation cost while translating the application to be filed at the offices which do not accept the application in a language it which originally drafted. These strategies are also to be looked into for optimizing the patenting cost of the patent portfolio.
Patent Filing Strategies
Another important aspect is to be clear about Patent filing strategies, like which countries are of focus, in which jurisdictions fast processing of applications are available, and should be accessed, is it good to file PCT applications and whether it is good to take part in Article 19 or Article 34 demands of PCT, etc. It is to be further noted that even the prosecution of each country application should to be aptly taken care of, with respect to carry out each of the forms filings and maintaining deadlines properly, efficiently carrying out technical analysis of the examination reports from the patent offices, and making minimal amendments to the claims to leave minimal breadth of the claims, and make to the point and effective technical and legal arguments, so as to overcome the objections with minimal iteration.
To keep the application active for its complete lifetime of 20 years, it needs to be maintained by paying the annuity or maintenance fees as per the deadline of the patent office. However, it is to be noted, these maintenance fees are substantial during the lifetime, and eats up substantial capital of the company, and according the patent portfolio is required to be regularly pruned, so that the non-performing patents or patent applications which are of no further importance, they shall be removed for maintenance schedule, and should be abandoned.
Commercialization of Patents
Patent Applications are filed in view of commercialization, and it is important to identify routes for commercialization from the day of existence of the invention or the patent application, i.e., whether the underlying technology should be used either as part of an existing or upcoming product, or it should be used for stopping a competitor’s product, or it should have substantial licensing potential. Accordingly, the companies should maintain a product to patent mapping to keep a track of significance of a patent, and once the significance of a patent is lost, the company start checking out a licensing potential of each of such patents, by carrying out licensing out exercise of such patent applications, which eventually requires to carry out licensee search too, and further requires claim mapping to products of prospective licensee.
Non-Practicing entity (NPE), who do not directly use the patent in their products or services, have only one available way of a mechanism to commercialize Patents, i.e., through the licensing of the patents. As they have only one source of commercialization, they apply aggressive approaches for identifying prospective licensee or infringer and uses litigation mechanisms to enforce their license on prospective infringers.
In the lifecycle of Patent, another important aspect is enforcement of Patent. If a Patent is not enforced, then it’s almost as good as not having the patent. Hence, a regular watch and infringement analysis should be carried out, if any of the competitors are infringing the patent through any of its products or services marketing, selling or usage. This watch can be carried out by screening the web or market regularly. Sometimes, even carrying out a regular Patent Watch is effective in carrying out an infringement check.
It should be noted that their patent application, and after grant, their patent can always be contented at different ways, i.e., before grant through Third Party Observations or Pre-grant Oppositions, after grant through Post Grant Oppositions, Post Grant reviews at Patent Offices, and later in court through revocation proceedings. The revocation proceedings to come to picture most of the times as a defence against Patent Infringement proceedings as litigation strategy by a Patentee. Hence, it is always important that the Patentee should always carry out a Validity Search and Analysis before filing revocation proceeding. And, for successful revocation proceeding, the Competitor or prospective Infringer should carry out an Invalidity Search and Analysis for a successful proceeding.
We at Singhwal strongly support the whole ecosystem of Patents, with various strategies which are specifically customized to your requirements and needs, so that we can help you achieve your objectives to strengthen your objectives in this ecosystem of Patents, and while doing so we do take care of your business and technical objectives.