There are quite a few common misconceptions regarding patenting.
Here, we address a selection of myths which are observed on an
all-too-regular basis, and provide some tips on how to better work
with the system.
Myth 1: Changing a product by 15% gets around a
It's a common misconception that changing a
patented product by 15% gets around the patent protection. This
could not be further from the truth. Patents protect a product by
defining the underlying invention in terms of "essential
features". If those essential features are present in a
competing product, then the patent has not been avoided, regardless
of how different the patented and competing products may seem. It
is often possible to develop workarounds to avoid third party
patent rights. However, that should be achieved based on a detailed
analysis of patent claims. Simply re-designing a copied product to
not resemble the original rarely has the desired effect.
Myth 2: Obtaining a patent gives you the right to sell your
Put simply, a patent does not provide the right to commercialise
a product or technology. Rather, patents are designed to provide an
exclusionary right, thereby to prevent others from commercialising
the relevant product or technology. Regardless of whether you have
a patent, there is always a risk that third party patent rights
could hinder your commercialisation process. Unfortunately, that is
an inherent risk of doing business. To manage the risks associated
with third party patent rights, it is possible to conduct various
searches. However, those are inherently inconclusive, and many
parties favour an alternative approach of building a defensive
patent portfolio thereby to provide leverage in negotiations,
should a dispute arise.
Myth 3: A patent is only valuable once it is
Many applicants are in a rush to have their patent application
examined and granted. However, there are many ways in which a
pending application is more useful. By way of example, once a
patent is granted, the claims are settled and it is possible for
third parties to develop workarounds with greater certainty.
However, whilst an application remains pending, there remains
flexibility to adjust the scope of protection sought, thereby to
capture attempted workarounds. Furthermore, at least in Australia,
damages for patent infringement back-date to publication, further
reducing the need to rush through the patenting process. Ideally,
the approach is to have both enforceable rights and a pending
application, and a number of strategies are available.
Myth 4: All patents are equal
The value of a patent is often more closely linked to the
quality of the patent specification than the quality of the
technology. A poorly drafted specification can significantly
detract from the ability to successfully enforce a patent, or
otherwise use it as a strategic tool. Unfortunately, the desire to
contain costs at an early stage leads many parties to skimp on the
quality of an initial patent specification. This often leads to
regrets in subsequent years, especially where that specification
becomes the basis for a number of applications worldwide.
Myth 5: It's crucial to protect your technology
Trying to obtain patent protection in too many jurisdictions is
a common mistake. It is by no means necessary to file applications
in every jurisdiction where there is a plan to commercialise, and
one should be particularly mindful that costs rapidly escalate as
more jurisdictions are selected.
A good place to start is by considering whether having a patent
application in a particular jurisdiction will actually be of
substantive assistance when commercialising in that jurisdiction.
Sometimes, it is possible to simply ride off the back of success in
Often it is far better to have several applications pending in a
small selection of key markets, rather than a single application in
a larger number of markets. This is the case both from a risk
management perspective, and an enforcement perspective.
The local and international patent systems are notoriously
complex, with many pitfalls for inexperienced players. Accordingly,
it's always important to ensure you are receiving the best
advice not only to have the applications prepared, but in
developing the strategy that underpins your patent portfolio and
which directly supports your commercialisation strategy.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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