Important Considerations on the Patent Process
As we have seen, filing your patent application in one country is just the first step.
You then have to decide if and when you want to pursue patent protection in other countries. Furthermore, once your patent is granted, you will need to maintain it and decide how you are going to use it. Are you going to use it to defend your monopoly position (possibly through enforcement), or are you going to license it to third parties to generate a stream of revenue or to prevent others from asserting their patents against you?
Read the examples below and uncover some of the considerations that affected the inventor’s patent rights in each case.
An engineering start-up company, wanting to keep its costs down, drafted its own patent claims. It then engaged a patent lawyer solely for the purpose of proofreading its draft and filing the patent application at the relevant patent office.
In the end, the company discovered that it had drafted its patent claims too narrowly and had missed an opportunity to extend the scope of its patent. Had the company known that it should have drafted its patent claims more broadly, it may have enjoyed greater benefits from this increased level of patent protection and significantly strengthened its market position.
In this case, by trying to limit its exposure to costly legal fees, the company got what it paid for and suffered as a consequence. Although a balance has to be achieved between managing one’s IP portfolio in-house and incurring legal expenses, some situations require specialized expertise.
The key is to engage the right professional with the right expertise and have that person involved not just in the mechanics of the patent filing but also in the strategic aspects of IP.
Randy did an extensive prior art search before filing his patent application. However, when he asked his lawyer to file the patent application in the United States, he neglected to mention that he had discovered and reviewed various pieces of prior art. After his patent was granted, Randy asserted his patent against a competitor who was blatantly copying his invention. In preparing its defence, the competitor discovered Randy’s failure to disclose all of the relevant prior art he had reviewed.
Under current US patent law, Randy might be found to have engaged in “inequitable conduct,” and his patent might be unenforceable even though it had been granted.