5 most frequently asked questions about patents
We answer five key patent questions.
It can be quite hard to keep track of your patent portfolio, especially where there are applications spread across multiple territories each at a different stage of the application process. In this article, you might want to seek help with managing your patent portfolio, no matter how big or small. we look at 5 signs that mean
Throughout the patent application process, there are typically several communications issued by the relevant IPO regarding a patent application. These can come at seemingly random intervals, and can seem unimportant.
However, these communications often set important deadlines which can be very costly but very easy to miss, and can result in the loss of an application. Letters from IPOs, especially those which come from out of the blue, can be relatively easy to lose and/or ignore, as generally no reminders are sent, and there will often be no acknowledgement that an application has been deemed abandoned until it is too late to remedy.
It can be quite tricky to keep track of where, or even whether, your patents and applications are active, especially in cases where international protection has been sought.
There can often be rather long periods in which no action is required of an applicant, for example whilst an application is awaiting examination. This may lead you to believe that the application is no longer active, whilst in fact the application is indeed still pending. This can be of importance in jurisdictions, such as the UK, where, in certain circumstances, provisional protection is available during the pendency of a patent application.
It is also useful when budgeting for intellectual property protection that you know the number of cases you need to allocate funds for, and when costs are going to be incurred over the next few months or years.
Deadlines can often be missed due to an applicant simply not realising, or not having the expertise to know, when certain actions fall due. Sometimes, reminders are sent be the relevant IPO to the applicant, but this is not always the case, and in some cases these arrive too late to remedy the issue, or mean that an additional fee is required to remedy the situation.
Additionally, if responses are submitted last minute, this increases the chances of mistakes being made, which can lead to negative consequences further along the process. Being able to keep track of what actions are required and when they are due ensures that appropriate time and care can be taken for each action.
Finally, knowing what actions are upcoming helps greatly with budgeting for IP protection. In particular there are certain costs (such as renewal costs) which fall due every year.
Having a patent granted for your invention protects you form other people using the claimed invention without your consent. However, the protection afforded is generally limited to the specific wording of the granted patent claims. A patent owner can mistakenly believe a competitor infringes their patent when it doesn’t, and this can result in a costly court case in which no infringement is found.
It can be particularly difficult to determine what your patent covers, if the claims have been amended multiple times during its examination before various IPOs, and especially if your patent for an invention in one country has different claims to a patent for the same invention in a different country. Slightly different patent scope in one country, compared with another, can lead to difficulty in determining what does and doesn’t infringe.
Having a clear idea of exactly what your patent protects in each different country is an extremely important factor when potential infringement arises. This can prevent costly mistakes in pursuing meritless infringement proceedings, but also allow you to make the correct decision at an early stage, in order to prevent long running and costly litigation.
Patent application filing and prosecution processes, and patent law in general, differ significantly between countries and is very complex. What is acceptable in one country may not be acceptable in another, and each country’s patent laws, although generally similar, can differ in ways which make it crucial to get your initial patent filings correct, in order to avoid problems further down the line.
If your patent applications keep getting refused and you don’t know why, there is a good chance you need help in navigating the quirks, rules and regulations of the patent system. For example, if your applications are refused for “insufficiency”, “added matter”, “lack of clarity” or any other seemingly nebulous reason, it can be very frustrating, if your idea is otherwise new and inventive.
It can be particularly irritating, not to say commercially disastrous, for a key invention to be refused a patent in a key jurisdiction due to that country’s particular patent law differences compared to your home country’s patent law.
Obtaining the advice of a professional patent attorney can ensure that these issues don’t occur, or are overcome efficiently. The earlier that you take advice, the better, as many issues can be avoided when first filing your application in your home country, by ensuring the application anticipates future issues if patent protection is extended to foreign countries.
If you would like advice from a patent professional, please get in touch to speak to one of our attorneys.
To conduct your own initial review of your current IP portfolio and internal IP management processes, click here to download our IP audit form.