4. Patent strategy

4.1 Filing strategy

The main limiting factors determining the filing strategy are cost, time requirements and existing prior art. All three factors need to be taken into consideration in conjunction with the commercial strategy of the company.

As mentioned in Section 2.1.1, the main cost drivers are the official filing fees and an inefficient communication process with the patent attorney. The volume of the patent application and the number of individual claims can also increase costs by increasing the filing and translation fees (where applicable). Key strategies for managing the costs include making use of reduced fees (e.g., if classified as a small entity in the United States of America), effective communication with patent attorneys, a good understanding of the existing prior art and a well-crafted patent application. If costs were non-limiting, then every company would file patents in every country with a patent system in place. That is never the case, because even huge companies such as Apple or Google would experience diminishing returns on the cost to file when enough of the jurisdictions with large markets for their products are covered.

Time constraints and pressures may arise for many reasons, such as an urgent need to file an application because of an imminent disclosure or a different competitor working the same field, investor requirements or for prestige purposes.

Because of the need for inventions to be novel and non-obvious compared with what has been brought to the market previously, prior art acts as a constraint on the scope of protection available. This pressure can be particularly acute in technical fields that have high levels of patenting activity.

4.2 Commercial strategy

The factors described regarding filing strategy in Section 4.1 above are relevant for commercial strategy, but from a different perspective. Whether to file a patent is decided according to anticipated return on investment. Consideration of all aspects is important, such as which markets offer the most financial returns from the sale of the product or service protected by the patent(s), which countries or jurisdictions would be involved in the supply chain for the product or service, and how competitors can be prevented from copying the innovation.

As a hypothetical example, if a company had enough budget to file in four jurisdictions, but there are five big market jurisdictions and another two jurisdictions that are main suppliers of the raw materials for the product, then at least one of the jurisdictions of interest should be related to the raw materials.

From a commercial perspective, other types of IP rights are considered for the same invention. For some process patents where it would be difficult to demonstrate that a competitor might infringe, it could be considered that maintaining the IP as a trade secret (Section 1.6) is the best commercial decision.

The commercial strategy is also heavily dependent on the state of research and development in the particular field, the innovation process of a company and how they prioritize the different projects.

For patent attorneys to be able to offer the best advice regarding the optimal strategy, they need to understand both the filing constraints (budget, time, prior art) and the commercial aims of the business.

4.3 Improved communication approaches

The communication between businesses, TTOs or inventors and patent attorneys can be improved (as with any communication) with greater empathy and by trying to understand what each party is trying to achieve.

In academia, researchers and inventors who are pushing the boundaries of science and innovation are usually motivated by the rapid sharing of their work with other colleagues or innovators around the world. Researchers and innovators are not necessarily motivated by money, and believe that patenting a technology may not be the best method of making an impact.

Patent attorneys strive to offer the best patent protection to their clients by drafting strong patent applications, influenced by the different requirements described earlier in this chapter. Their success is measured by writing patents that define commercially relevant protection, are robust against opposition or invalidation proceedings, and do not allow competitor companies to work around the claims.

There are a few points of friction that are commonly present between researchers or inventors and their patent attorneys and patenting requirements.

1. Private-practice patent attorneys work with different companies, different technologies and usually prioritize projects according to deadlines, while an in-house patent attorney can specialize in a specific field and can dedicate more time to the most important projects.

2. Examiners try to analyze the patent application from the PHOSITA perspective but, in reality, there is still a degree of subjectivity that relates to the examiner’s background and experience. It is very difficult for an examiner to determine whether something is or is not obvious in hindsight. For this reason, most patent offices have a well-defined process for assessing the inventive step.

3. Researchers or inventors often need to publish details of their research for career advancement. However, if such publications take place before a patent application is filed, they will constitute highly relevant prior art in most jurisdictions, rendering patent protection difficult or impossible to achieve. There can therefore be pressure to prepare a patent application rapidly, so that it can be filed before the invention is published in a journal or presented at a conference.

4. The expertise of researchers and academics in their field can hinder them in identifying the inventions in their work; however, a patent attorney could potentially find inventive concepts in the work that could seem trivial to the researcher.

5. There is a requirement to have only one invention per patent, and patent attorneys often wish to persuade patent office examiners of patentability by telling a coherent story across the patent application. Attempts to add new information at the last minute can lead to significant rewriting, and may mean that the entire application needs to be reviewed for consistency and to ensure a single inventive concept.

All these issues can be addressed with greater insight into the needs of both inventors and patent attorneys. Based on our experience and the results of our survey, we recommend the strategies in the following subsections.

4.3.1 Researchers and inventors

When discussing their work or invention with a patent attorney, researchers or inventors should consider the following.

1. Describe the work or invention in its entirety without omitting anything, even though it might seem trivial. Emphasize any result that is surprising or unexpected in line with your knowledge of the field. When describing this, it is helpful to also explain the different methods or paths by which you could achieve the same results. Also, consider how a competitor researcher would try to achieve the same result.

2. Mention all previous disclosures of the work or similar work (e.g., MSc thesis with poor results, poster at a small conference, etc.)

3. Perform a search of prior art documents (prior patents or scientific papers) and identify any similar technology or inventions. Alternatively, provide the most relevant keywords to a technology transfer or patent search professional.

4.3.2 Patent attorneys

Based on the experience of the patent attorneys and technology transferprofessionals who participated in our survey, the following recommendationsemerge for obtaining a high-quality disclosure when discussing a client’s workor invention:

1. Explain the key requirements for patenting and how they link to the scientific data.

2. Explain the suitable patent timeline and the key milestones.

3. Explain the compromise between the claim breadth and its defensibility during examination and after grant.

4. Explain the risks of prior disclosure and wrong inventorship.