Obtaining and Defending a Patent
The most important steps in obtaining a patent are drafting the patent application and prosecuting it through the examination procedure at the Patent Office. The key aim of a Patent Attorney at this point is to obtain the broadest possible patent covering areas of commercial interest to the client company. After the Patent Office grants a patent, the patent can be attacked by third parties, either before the Patent Office or in Court. When defending a patent, the aim of a patent attorney is to retain the broadest possible patent protection. If the patent attorney is attacking a third party patent for a client the aim is to either obtain revocation (nullification) of the patent or reducing the area protection which the patent provides. Each of these activities are distinct from each other and a good Patent Attorney will possess the relevant skills to carry them out in a way which best serves the client company’s interests.
The Drafting of a Patent Application
A patent application provides a description of the invention. However it is a complex document and must be written in a manner which facilitates the obtaining of a patent with broad protection. The invention should be described in a manner which highlights its contribution to the field, showing the advantages which are provided over the existing technologies. It must also define the areas in which patent protection is desired. This is normally broader than the experimental work which has been done since a patent can essentially cover areas in which the concepts derived from the experiments are applicable. The patent application must also be written in a manner which offers maximum options during examination and if it comes under attack from third parties after grant. This means that it must contain language which will allow the area of protection to be redefined in the circumstance where retaining the original definition is no longer possible.
Examination of a Patent Application
Before the patent application is examined at the Patent Office a search of the invention will be carried out to identify relevant published documents. This allows the Patent Office Examiner to ascertain the state of the relevant field at the time the invention was made, and therefore to judge the contribution made by the invention. The main purpose of examination is for the Patent Office to decide on the breadth of protection which should be allowed given the state of the field in which the invention was made. In this process a Patent Attorney is required to show the Examiner why broad protection is deserved. The patent application normally needs to be amended to limit the definition of the scope of protection which is sought, and a good patent attorney must be capable of doing this in a way which is acceptable to the Examiner and which retains protection over areas of commercial interest.
Defending a Patent
A Patent Attorney will normally be defending a patent in an opposition procedure at the European Patent Office. The opposition procedure allows one or more third parties to attack the patent after it has been granted. The third parties are normally competitors of the company that holds the patent. This procedure can take many years and has many steps, including an appeal stage. A good Patent Attorney must be able to judge whether amendment of the patent is required to limit the scope of protection and at what stage in the opposition procedure this should be done. This requires the Patent Attorney to judge the strength of the attacks being made and how the Opposition Division of the European Patent Office will react to them.
We have found that client companies do not always recognise when their experimental data has resulted in a patentable invention. By performing periodic reviews of the data being generated in a research program we can advise on whether patent protection could be obtained in areas of interest. Alternatively we might advise that further data is needed before broad patent protection could be obtained.
Filing Strategy and Patent Portfolios
Companies will often file a series of patent applications in the same area based on a continuing research program. It is crucial to ensure that each patent application is filed at the optimal time with the appropriate amount of data. Each patent application should be filed as early as possible to obtain patent protection before competitors and to minimise the effect of relevant publications in the field. The patent applications must contain sufficient data to support the breadth of protection that is sought. However the contents of the patent application should also be carefully reviewed so that later patent applications are not impacted.
Filing patent applications in this way allows areas of commercial interest to be protected by several layers of patent protection. However large portfolios are expensive to maintain and we can advise on the best way to structure the portfolio so that it remains cost-effective.