“Should I file a patent?” That simple question is one of the most common questions intellectual property (IP) counsel are asked across all forms of IP (e.g., patent, copyright, trademark, trade secrets, etc.). Before deciding whether to file for IP protection, it is imperative to consider the types of protections available in the jurisdictions in which you may seek protection.
Patents Provide Opportunities to Keep Competitors at Bay
When deciding whether to file for a patent, the first step is to identify the reason for seeking protection. Perhaps the goal is to market a product that competitors will be unable to copy. Or, perhaps the goal is to create barriers of entry to competitors in a technology space. Maybe you desire to own a patent to a technology that is clearly valuable to others, with the hope of potentially licensing the patent to others. Of course, your goal of capturing the monopoly afforded by a patent should be balanced against the resources required to obtain that patent.
Availability of Patent Protection
Each country has its own patent system and, in general, patent protection is limited to the country in which is it obtained. Thus, for example, a U.S. patent can only be enforced in the U.S.; a Canadian patent can only be enforced in Canada. Helpfully, many countries have entered into treaties which allow for centralized filings and preliminary examinations to be conducted. Ultimately, however, any patent which issues will be limited to the particular country in which it was issued. Therefore, one strategy that may be selected is to file patent applications broadly around the globe, such that similar patents in many countries may be obtained.
Currently, there are two ways to obtain a patent in a specific European country. The first way is to directly file a patent application in that specific European country. The second way is by filing a “regional” patent application with the European Patent Office (EPO); the EPO acts as a central filing and examination office for countries belonging to the European Patent Convention (EPC). After a successful examination process, you will be able to decide in which European countries the patent should be effective (cost does become a consideration). Ultimately, either filing method results in a patent which is enforceable only in the selected country(ies). It is anticipated, however, that later this year (2022) Europe's Unitary Patent System will come into effect. This System will allow for a single patent application to be filed at the EPO, similar to the current process; however, once issued, it would automatically be enforceable in up to 25 participating European countries (meaning, you would not need to select specific European countries after a successful examination).
Assessing the Patentability of Subject Matter
The ultimate goal of the U.S. patent system is “to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” Article I, Sec. 8, Cl.8, U.S. Constitution.
To achieve this goal, the U.S. patent system grants a patent – an intangible right – to a patent owner which allows the patent owner to exclude others from making, using, selling, or offering for sale the patented invention without permission; the right is generally limited to a duration of twenty years from the filing date of the patent application. In exchange for this right, the invention must be disclosed to the public in the form of the patent document, to teach the public about the invention, and to put the public on notice as to what the invention is claiming, i.e., the boundary which must not be crossed. Thus, an inventor is given a limited monopoly to the invention in exchange for teaching the public about the invention and thereby promoting the public good.
However, while many ideas are excellent, not all ideas are patentable. In particular, and contrary to what is commonly believed, ideas themselves are not patentable; rather, a tangible manifestation of the idea (e.g., a product, process etc.) is patentable. In some cases, the idea (as manifested in a tangible form) has already been patented or prior art (prior public disclosures or uses) exist which preclude its patentability; in other cases, patent protection is not available because even the tangible manifestation does not fall into a category that is considered eligible for patent protection. To make this determination, it is usually necessary to consult an experienced patent attorney. The significant advantages of obtaining patent protection are well worth the time and effort to seek advice as to one's potential patent protection. An experienced patent attorney can provide advice as to the likely patentability of your invention, as well as the likely costs associated with obtaining and maintaining the patent. You can then balance the likelihood of obtaining a patent and its potential protection for you against the cost of obtaining and maintaining the patent.
The patent statute lists categories of inventions which qualify for patent protection, namely:
“new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” (35 U.S.C. §101).
Thus, new products, compositions, devices, business methods, software, processes and even methods of treatment are examples of inventions that may be patented in the U.S.
However, in addition to being new and useful, the invention must also be novel and unobvious in view of what has been done before. This determination is usually made by an experienced patent attorney after conducting a patent search on – and evaluation of – the invention.
Once final caveat: patent laws and requirements are different in every country. For example, some countries do not permit methods of treatment (treating people for medical purposes) because it is considered to be against public policy; other countries only allow pharmaceutical protection if the active ingredient is a new chemical entity. Many factors and nuances must be considered when filing for international patent protection. At bottom, it is best to consult a seasoned patent attorney to help you identify whether your invention can be protected by a patent and whether patent protection can be obtained in the country of interest.
These are just a few of the items to consider when asking “Should I file a patent?” H&B can help you navigate these considerations and many others to extract the most value out of your future patent to help build the foundation and position your business for success.
Originally Published 17 June 2922
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.