6 Advanced Patent Law Topics Every Business Lawyer and Tech Entrepreneur Needs to Know
Knowing some simple but not so well-known concepts about patent law can help you better protect a business’s patent and intellectual property rights. In this article, we will explore simple but advanced patent law concepts that every business lawyer should know.
1. Challenging a Competitor’s Patent
There are several ways to challenge a competitor’s patent without filing a lawsuit in federal court using post-grant proceedings. Post-grant proceedings are conducted before the Patent Trial and Appeal Board (PTAB), offering a faster and more cost-effective alternative to district court litigation for challenging patents. Post-grant proceedings provide a mechanism to challenge the validity of a patent after it has been granted by the United States Patent and Trademark Office (USPTO). These proceedings include Inter Partes Review (IPR), Post-Grant Review (PGR), and Covered Business Method (CBM) review. IPR is the most commonly utilized pathway and allows third parties to challenge the validity of a patent based on prior art in the form of patents or printed publications. PGR, a broader review process, can be initiated within nine months of a patent’s grant or reissue and can challenge the patent issues of novelty, non-obviousness, and insufficient disclosure. CBM review, targeted at patents covering financial products and services, allows for challenges based on a wider array of prior art, as well as additional grounds such as insufficient written description and indefiniteness. The strategic use of post-grant proceedings can be a pivotal aspect of a company’s intellectual property strategy, allowing stakeholders to clear the field of potentially invalid patents that might impede innovation or commercial activities.
2. Pay Close Attention to Filing Dates to Protect International Patent Interest
Failing to plan for international patent protection can greatly affect a business’s rights. After an applicant files a US patent application, the applicant has an opportunity to file for patent protection in other jurisdictions. However, there is a deadline for when the applicant can seek patent protection in foreign jurisdictions. The deadline for filing in foreign jurisdictions can depend on several factors including whether a Paris Cooperation Treaty (“PCT”) patent application has been filed, if and when the invention was made publicly available, and when the US patent application was filed. What is very important to remember is a strategy for international protection should be considered early on in the process so that business decisions can be made. If a business has interests or aspirations outside of the US, then at least knowing about how taking certain actions may affect your patent rights should be carefully considered.
3. Don’t Disclose Your Invention Too Soon
Great ideas are meant to be shared with the world, right? Yes, but sharing your invention or idea prematurely can leave it vulnerable to being copied or stolen by competitors. In the US, if you do not file a patent application within one year of publicly disclosing an invention, you are barred from ever obtaining a patent for it. The one-year period is known as a “grace period.” However, in other jurisdictions, there may not be a one-year grace period. For example, China has a six-month grace period. And, the EU has an even more limited grace period, and some jurisdictions have no grace period at all. If a business has international aspirations for a product or service, then before revealing any proprietary information, it is crucial to determine the best way to protect it. Then, you can create a strategy to ensure you maximize your competitive advantage.
4. Consider Filing Provisional Patent Applications
A provisional patent application is a cost-effective way to protect a business’s patent interests. By way of background, in patent law, all countries now operate on a “first to file” system. The first to file system means that the first person to file a patent application on an invention will have superior rights over another person that files a patent application for the same invention at a later date. Some commentators have said that the first to file system recreates a race to the patent office where the winner takes all, which may be true in certain highly competitive industries.
A provisional patent application allows a business to establish a filing date to help secure its patent rights in the first to file system. Also, a provisional patent application is typically less costly than other patent applications, known as non-provisional patent applications, because a provisional patent application’s government fees take less attorney time to draft and have much fewer legal requirements.
However, a provisional patent application only lasts for one year and then will expire unless a non-provisional patent application is filed. Many businesses will use the one-year period after the provisional patent application is filed to publicly disclose the invention to test the commercial viability in the market, raise capital, and to make improvements on the invention’s design. Within the one-year after the provisional patent application is filed, on one hand, if things go well and it makes business sense to do so, a business will then file a non-provisional patent application to secure patent rights and create a competitive advantage. On the other hand, if the product is not a success, or for other business reasons, it does not make sense to protect the invention, then no patent application needs to be filed and the cost for exploring the opportunity is minimal compared to losing patent rights if it was a success.
5. Using Non-publication Requests to establish a competitive advantage
Where applicable, non-publication requests can be used to create a significant competitive advantage. By way of background, after an application files a patent application, the USPTO publishes patent applications 18 months after the filing date or the earliest priority date. This means that 18 months after the filing date the entire world, including your biggest competitors, can see what you find to be the inventive aspects of your product or service.
However, a USPTO non-publication request is a mechanism by which inventors can request that their patent applications not be published or made publicly available before the patent is granted. This allows inventors to keep the details of their invention confidential during the patent examination process. Keeping the details of an invention can provide a huge competitive advantage in highly competitive markets for at least two reasons.
First, not publishing a patent application creates a barrier for competitors even before a patent is granted, especially in highly competitive industries. In highly competitive industries, many times competitors monitor each other’s patent filings. If a competitor is not able to see a patent application on a product that has “patent pending” status, then the competitor may be hesitant to bring a product or service to market because it would be difficult to determine the scope of potential patent rights.
Second, not publishing a patent application allows a business to safeguard sensitive information as a trade secret. By opting for non-publication, inventors can maintain the confidentiality of their innovations during the patent application process. This strategic choice prevents the premature disclosure of details related to the invention to the public. As a result, a business can explore the possibility of obtaining a patent, but if unable to do so can still maintain the information submitted to the patent office as a trade secret. This provides a business with the opportunity to explore market potential, secure licensing agreements, or engage in strategic collaborations while retaining exclusive control over the undisclosed aspects of their invention. This confidentiality can be crucial for businesses aiming to protect their competitive edge and maintain a strategic advantage in the marketplace.
But there is a catch. A non-publication request can only be filed if an applicant does not intend to seek protection outside the United States.
6. Consider Expediting Patent Applications
The USPTO currently has a backlog of over 770,000 unexamined patent applications, resulting in long wait times for a patent examiner at the USPTO to examine a patent application. These wait times, depending on the technology, can exceed two years. However, the USPTO offers “Track 1” and “Accelerated Examination” programs for utility, plant, and design patent applications, significantly reducing wait times. Expediting a patent application may allow an applicant to obtain a patent within months of the filing date of a patent application. Additionally, efficient use of these fast-track programs may also help your business decide whether to pursue international patent protection and how to adjust the patent application to expedite the examination process when seeking international patent examination. For more information about Derek Fahey, this article’s author, click HERE.
