5 patent cases that changed biotechnology patenting in Europe
There have been many developments in biotechnology patent law which have resulted in significant changes to patent protection for…
It is important that any patents you file and those which you may already own remain relevant to your business and any new commercial aims. Obtaining and enforcing patents may be expensive and time consuming, so it is sensible to keep on top of your patent portfolio to ensure it aligns with your intellectual property (IP) strategy, business strategy and your budget. The following steps can help you with this.
Few companies have budgets so great that they can afford to protect every aspect of their technology. As such, a first consideration for effective patent portfolio management is to identify commercially useful inventions for patent protection. The relevant considerations at this stage may vary from one business to another. However, the following factors are useful to bear in mind, no matter what your strategy or budget:
A first patent filing will likely be made at the UKIPO (a UK patent application) before deciding whether to pursue patent protection outside of the UK.
In deciding whether to continue with the UK application and/or to file any overseas applications, it is important to fully review the search report drawn up by the UK patent Examiner on the UK patent application. The search report is usually put together around 6-9 months after filing the UK patent application. In the report, the Examiner will list the documents (mainly previously published patent applications and patents but may include some non-patent literature) which they believe to be relevant to the patentability of the invention claimed in your patent application.
The documents identified in the search report may provide an indication as to whether the patent application will proceed to grant and, if so, with what scope. The search report may therefore act as a guide for whether it is worth pursuing patent protection overseas and/or continuing with the UK patent application, given the relevance of the documents identified in the search report.
Patents are territorial rights, meaning that a UK patent can only be enforced in the UK, a US patent can only be enforced in the US, etc. Generally, if patent protection is sought in multiple countries, then separate patent applications will need to be filed in each country of interest.
Once an initial patent application (for example a UK patent application) has been filed, you have 12 months from the date of filing this application to decide in which countries to file further patent applications. It is possible to push this decision back by 18 months (i.e., to 30 months from the date of filing the initial patent application) by filing an international (PCT) patent application within the initial 12-month period, then 18 months later, splitting the international application into desired national applications.
Applicants often see costs dramatically increasing when filing and prosecuting patent applications outside of the UK, due to a number of factors (including the requirement for translations, more expensive government or foreign attorney fees, difficulty in obtaining protection in other countries, etc.). Effective patent portfolio management will carefully consider which countries to file in. The following considerations may be useful in deciding in which countries to apply for patent protection:
It typically takes several years from filing a patent application to it being granted and, because of this, patent prosecution is often seen as a long, drawn-out process which takes a long time to deliver results. This may act as a deterrent to applicants who are sat on the fence over whether to try and obtain patent protection for a new invention.
Thankfully, there are numerous ways to speed up the patent prosecution process to obtain a granted patent in a far shorter time than several years. This can help a company quickly revamp its patent portfolio.
It should also be noted that action cannot be taken against potential infringers of your patent until your patent is granted. As such, if you become aware of a potential infringer, it is sensible to accelerate prosecution of your application as far as possible so that action can be taken against the potential infringer at the earliest opportunity.
There are several ways to accelerate prosecution of a UK patent application, for example:
Patents which were once of key importance to your business may be less so now. For example, a patent covering a product which has since been discontinued by your business may be of relatively little importance now compared to when that product was a top selling item. Also, it may transpire that some products are not as successful as first thought when patent applications were initially filed to cover that particular technology. You may also have filed patent applications relating to technology which hasn’t been commercialised in the short-medium term and isn’t likely to be in the long term.
To maintain a granted patent through to its 20-year patent term, annual renewal fees must be paid and these tend to increase in cost each year. As such, if you have granted patents in several countries which cover a product your business is no longer selling, then the annual renewal fees may amount to a significant cost for which there is little benefit. You are not required to keep a patent in force for its full 20 year term. A patent can quite easily be abandoned by withholding payment of the next due renewal fee.
Pruning less valuable patents from your portfolio is a good way to save money and to keep your portfolio up-to-date with your business.
If you would like advice or need help with your patent portfolio, please get in touch to speak to one of our attorneys.