Australia: 5 strategies to use the prior art to assist in product development

Last Updated: 19 October 2018
Article by Michael Zammit

In a previous article, we looked at the role of IP in innovation. In overview, the cycle of innovation can be broken down into 4 stages: 1.) conception of innovative ideas, 2.) research and development (R&D) , 3.) commercialisation of product or services, and 4.) marketing of the products or services. As the activities undertaken at each stage are different, it follows that the IP considerations are different at each stage, too.

In the course of developing new products and services, searching and analysis of the prior art (that is, everything known and published in the relevant field at the time) is a critically important part at each of these 4 stages. By reviewing the prior literature, it is possible to ascertain whether an idea is new and potentially inventive, whether there may be a commercial market for the idea, and therefore whether or not to proceed with investment into the idea. A wealth of other useful information is also available, including information on potential competitors, technology trends, and possible licensees of the invention. We have discussed prior art searching (and freedom to operate search and analysis) in detail in a previous article.

The prior art can also be used in other ways. For example, during the development of a product one may realise that having certain additional features would be desirable, or perhaps solution is required to a particular technical problem. To avoid having to develop or invent a solution from scratch to deliver those features (or solve those problems), it may be possible to utilise third party inventions. In the case of a third-party patent, a license fee may be required, or it may be possible to purchase that third party's IP. Under some circumstances, it may be more cost effective to license or purchase that third-party IP, rather than developing something to work around it. However, to avoid having to license or purchase the IP it may be possible to utilise inventions or techniques that are in the public domain, and to adapt them as required to suit the product under development. Such approaches can reduce product development time and save R&D expenditure, which can be redirected to other development activities.

The following are several options that could be explored to potentially access public domain inventions/techniques to deliver those desirable features or solve those technical problems.

Option 1 – Utilise inventions in expired patents

One source of pre-existing inventions that may be suitable for a new product can be found in the patent literature. Specifically, patents which have expired, i.e., which are greater than 20 years old. Use of an invention in an expired patent is generally free for the public to exploit, and is likely to be free from infringement issues, provided the invention disclosed in the patent is followed very closely.

Option 2 – Utilise inventions in abandoned or invalid patents

Alternatively, or additionally, another source of pre-existing inventions that may be suitable can be found in patents which are less than 20 years old, but which have been abandoned by the owner. To maintain a patent, the Applicant must pay periodic fees to the patent office. In some cases, Applicants decide to cease payment of these fees, thereby effectively abandoning the property and surrendering the claimed invention to the public. The caveat with this option, however, is that under some limited circumstances it is possible to reinstate a patent that has lapsed for failure to pay renewal fees, and therefore there may be some risk in utilising the invention defined in that abandoned patent. Generally speaking, however, the longer the patent has been lapsed the less likely it could be reinstated.

In a related option, many patents are filed and examined and the claims are declared invalid by a patent office in view of the prior art. That patent is abandoned, and the invention is potentially publicly available.

Option 3 – Patents not nationalised in the jurisdiction of interest

Yet a further option relates to patents filed in other jurisdictions which have not been filed (or, in the case of a PCT application, 'nationalised') in the jurisdiction which the product will be marketed. To explain, in some cases an Applicant will file for protection of its invention in the main commercially relevant countries. However, limited financial resources will mean that it usually cannot file in every country that is commercially relevant. To illustrate, five out of every six patent applications filed in the USA are never filed in Australia. This means that the invention is potentially available in a jurisdiction where no patent protection has been sought. A complication to be aware of is that under some limited circumstances it is possible for an Applicant to validly file in a jurisdiction after the relevant deadline has passed. The Applicant will need to show that it was always their intention to file the application, but there has been some error or omission which prevented the application from being timely filed.

Option 4 – Adopt technology disclosed but not claimed

Another option is to adopt technology disclosed in a patent, but not claimed. During preparation of a patent application Applicants often disclose multiple embodiments of an invention, and sometimes disclose multiple inventions, too. During prosecution of the patent the claims may be narrowed to an extent such that some embodiments which are described are no longer covered by the claims. Alternatively, limited resources and sometimes commercial decisions mean that a second invention which is described is not pursued in a divisional application. In such cases, those embodiments no longer covered by the claims (or further inventions not claimed), are potentially available to the public.

Option 5 – Adopt discoveries disclosed in the academic literature

Yet another option is to utilise discoveries described in the academic literature. Academics are under constant pressure to publish their work, and whilst it is not mutually exclusive to publish and also seek patent protection of their discoveries, limited resources mean that, on some occasions, discoveries are published without a patent being filed beforehand. Alternatively, some academics are possibly not interested in seeking patent protection, or do not see the broader commercial potential of their work. Under these circumstances, the discovery is potentially available to the public.

Freedom to operate

Freedom to operate searching and analysis is aimed at determining the risk of a product (or the working of a method) infringing third party patent rights, i.e., whether there is freedom to operate in the marketplace. Generally speaking, it is strongly recommended that a freedom to operate search is undertaken prior to any commercial exploitation of any product or method. However, several of the options identified above require special considerations, and therefore a freedom to operate search is especially recommended if any of these options identified above are being considered.

Improving on the prior art

The options above may provide potentially free public domain inventions that may be a useful adjunct to a product under development. The corollary is that there is no monopoly available to stop a competitor from exploiting those same public domain inventions. Accordingly, it may be useful to allocate R&D resources to improving those prior art public domain inventions, with a view to seeking patent protection on the improvement so as to provide some monopoly on these aspects of the commercialised product or method. It is important to note, however, that if you improve upon a patented product or process, it is still possible to infringe the claims of the basic patent.

Closing comments

Ideally a patent is associated with a new product or service. If, however, the product/service would benefit from certain additional features, to avoid licensing fees and to reduce product development time and save on R&D expenditure it may be advantageous to utilise inventions or techniques that are in the public domain. Abandoned or expired patents may be a source of suitable public-domain inventions, and there are other sources as described herein. Irrespective of the source of public domain inventions, however, it is strongly recommended that a freedom to operate opinion be obtained prior to any commercial exploitation or a product or method.

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.

Shelston IP ranked one of Australia's leading Intellectual Property firms in 2015.

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Michael Zammit
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