“File! File! File!” The clarion call comes from patent attorneys and inventors alike when the golden glimmer of an invention is revealed amid empty coffee cups and biscuit crumbs of an invention mining session. Before starting to draft claim 1, though, it is essential to ask: why are you filing? What are your goals for this prospective patent application? Getting patents granted can be (equally, cannot be) expensive; that cost will need to be justified sooner or later to your internal client or investor.
An understanding of the wider benefits of patenting – i.e. the diverse reasons to file patent applications – is believed to support SMEs in their use of the patent system*. You should discuss your goals with your patent attorney at the outset to pin down your reason for filing, i.e. the benefits you might expect to get. This conversation will include figuring out the breadth of protection you want; the territory in which you want it; the speed at which you need to get it; and the costs you're willing to pay. Below are five potential reasons for filing and the key driver for the filing and prosecution strategy. * =see Building the Evidence Base on the Performance of the UK Patent System
Secure investment (time)
For many start-ups and venture-backed companies, the strength of their intellectual property is a key factor in pitching to current and potential investors. So, with an eye on the next funding round, it’s important to file the patent application and seek a positive opinion on patentability as fast as possible. Ideally, this opinion would arrive well within the priority year to help secure funds for the wider filing programme. Different patent offices will pick up new patent applications at different rates. UK attorneys are fortunate in that the UK IPO is well set up to move quickly when asked: tick the right boxes on the filing forms, give a reason for acceleration (see here), and the examiner can issue their opinion on patentability within a month or two.
2. Cover emerging concept (breadth)
There’s an invention in there, but no-one’s sure what form it’s going to take. Filing could be delayed for now, but then there’s a chance a competitor could file first, or that a disclosure will knock out any chances of getting protection. Therefore, companies with deeper pockets will often file broad applications and take an unhurried approach to prosecution while ongoing development and trials figure out the commercial embodiment. The claims can then be focused on that embodiment as examination progresses, in a divisional application, or in a narrower follow-on application to provide an extra layer of protection and, potentially, valuable additional patent term.
3. Stop copycats (territory)
It’s patents 101 that they are national or, in some cases, regional** rights: elegantly drafted claims are little use if they’re not covering the territories in which your competitor is using your invention. It’s rare outside big pharma to have a budget that will stretch to a blanket filing strategy of everywhere from the home nation to Timbuktu. Nevertheless, effective protection can still be gained via a filing strategy that takes account of where copycats might build their manufacturing plants, or through which transport hubs their products might pass en route to the big markets. [** e.g. a GCC patent, an EU unitary patent (in the future, we hope)]
4. Patent boxes (costs)
Patents are, one way or another, commercial tools. This is laid bare most starkly for patent applications filed to exploit tax breaks, such as patent boxes: their sole aim is to reduce the tax bill, nothing else. Spending more on the patent application would eat into that cost saving, defeating its raison d'être. So, draft a narrow claim to the commercial product that is the source of the taxable revenue and, since granted claims are needed to claim the tax reduction, use any free mechanisms for acceleration (e.g. see above) that are available to move the case to grant ASAP.
5. Tanks on the lawn (breadth)
Patent wars can get ugly. Many will remember the iconic (albeit imaginary) picture of a line of Samsung lorries delivering $1bn in coins to Apple HQ during the smartphone wars. They are not a modern concept of course, not even in telecoms; Alexander Graham Bell battled 600 lawsuits. It’s rare, of course, for disputes to go that far, but it’s not uncommon for competitors to tool up by filing patent applications around each other’s key IP or commercial products and processes. The aim may not always be to use the eventual patents in anger, but instead to apply pressure to the other side to come to the negotiating table.
The reason for filing the patent application will thus dictate not only the approach for its drafting and filing, but also decisions on its direction for the rest of its 20-year maximum lifespan. It is therefore critical to frame this clearly at the outset.