Patents

A patent document includes a detailed description of an innovation that is captured in the “claims”, the numbered paragraphs at the end of the document. In writing a patent document, by first preparing a set of claims, the drafter is more readily focused on explaining the innovation so that the document satisfies legal requirements.

How Valuable is a Patent?

The value of a patent is dependent upon many factors. For example, the value may depend upon whether there are limiting features in the claims that a potential infringer can easily avoid. Adding features to the claims during prosecution will typically narrow the breadth of a patent, which in turns limits its value.

Another factor is whether a patent is part of a larger portfolio, or it is a stand-alone asset. If it is part of a portfolio, the breadth of the portfolio will be wider than that of a single patent.

Another factor is whether the industry sector to which the patent relates has a crowded patent landscape. If the industry sector tends to utilise the patent system, there will be more interest in the patent(s) than in industry sectors where patents are not used.

Another factor is whether the patent owner has identified any potential infringers. Whether an infringer has deep pockets will also be a consideration.

Another factor is whether the patent relates to a minor improvement in technology or whether it relates to ground-breaking technology.  If it is part of a larger portfolio, minor improvements may add up to substantial improvements. However, if it is a stand-alone patent, a patent’s value will be high if it is ground-breaking technology that the industry sector will be expected to adopt as a matter of course.

The value of a patent or a patent application can often depend upon how well it is drafted. Therefore, it is recommended that a would-be patentee utilise the services of a professional with relevant experience in drafting and prosecuting a patent. Moreover, if a patentee is intending to go global with the innovation, a professional should be capable of drafting one document that is compliant with the laws of many international jurisdictions.

Is Secrecy Important?

A very important requirement of obtaining a patent is that the invention was a secret before a patent application is filed in a National Patent Office such as IP Australia.  Many patents have been invalidated during patent litigation because the inventors were careless about how they managed their Trade Secrets.

Each jurisdiction such as Australia, the US and the European Union has its own rules as to what constitutes secrecy.  Many serious patentees file their patent applications overseas.  To assure that their patents are valid, they maintain complete secrecy of their invention before filing their patent application in the first country.  Once priority is established in a first country, they may file their patent application overseas.  Once priority is established, they are free from the constraints of secrecy of Trade Secrets.  They are then able to disclose their invention to the public.

The US has a particular type of secrecy requirement.  It is called an “On-Sale Bar”.  Oftentimes, anxious entrepreneurs will offer their invention for sale.  This action starts a clock ticking in the US.  In the US, would-be patentees have one year from public disclosure to file a patent application on the invention.  This On-Sale Bar is created by offering the invention for sale.  Additionally, any other type of public disclosure will start the clock ticking in the US.  An inventor who intends to file a patent application has one year from public disclosure anywhere in the world to file a patent application in the United States Patent and Trademark Office.

The requirements of secrecy in different jurisdictions are complicated.  It is best to maintain strict secrecy of an invention before filing a patent application in a Convention country.  Australia is a Convention country.  It is also best to obtain the advice of a qualified patent professional before making any assumptions as to whether an invention has been publicly disclosed, and what the time limits for filing a patent application might be.

What are the Benefits of Searching?

Whether a would-be patentee is planning to patent only in Australia or is planning to patent globally, an examiner in the patent office examining the application will search globally for the features of the claims. The standard is whether the innovation is novel and inventive regardless of international borders.

Professional services in drafting and prosecuting (communicating with the patent office(s)) patent applications are expensive. So, money is well spent, searching should start with a simple “Google Patents” search which could turn up previously patented technology. Additional searching may be dependent upon the knowledge of the would-be patentee. If that person is very familiar with the sector, then a search can be tailored to according to that knowledge.

Once the practitioner and the client have a good understanding of the patent landscape, then writing the claims first, and then the rest of the document (the specification).

Freedom-to-Operate

Where there is a crowded patent landscape, an entity seeking to introduce a product into the sector should consider the risk of patent infringement. In that case, mapping out the patents owned by competitors up against a new product, and adjusting it if necessary to avoid patent infringement, may be well worth the effort. It is important to determine if there is a risk that a patentee holds a patent covering one or more aspects of the product to avoid a dispute.

Freedom-to-operate with respect to trademarks and designs is also equally important.