ARTICLE
11 August 2023

Embracing Uncertainty: The Only Rational Response To Competitors Ungranted Patents?"

H
HLK
Contributor
HLK is a global cooperation combining Haseltine Lake Kempner LLP and HL Kempner Partnerschaft mbB and provides a full suite of IP services advising across the entire IPR Lifespan™ in all technical and scientific disciplines. With offices in London, Bristol, Munich, Leeds, Glasgow, and Guangzhou (China), HLK provides IP services across the globe. HLK’s resources and expertise are exclusively dedicated to IP protection: safeguarding the inventions, creative designs, brand identities and other innovations of its clients. HLK advises on the strategy, identification, protection, opposition and appeal, exploitation and enforcement of IP rights, and defends its clients from allegations of infringement by focusing on acquiring competitive advantage for its clients. HLK is privileged to work with some of the most exciting and forward-looking businesses in the world which are at the forefront of innovation and product development in their various spheres.
Working with start-ups, every so often I'm asked a question which is almost impossible to answer. The person asking it is usually anxious and perplexed, and often short of funds.
UK Intellectual Property
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Working with start-ups, every so often I'm asked a question which is almost impossible to answer. The person asking it is usually anxious and perplexed, and often short of funds.

The question goes: is this third party's patent application relevant to my business?

The first thing to highlight is that a patent application is not a patent. With a bit of spare time and a little cash, you can file a patent application and get it published covering anything you please. It is likely to be some time – perhaps around 18 months to 5 years from publication – before a patent is granted, if one is granted at all. The scope of the granted claims may be different from the scope of the claims in the application as published. Alternatively, the applicant may lose interest or may have their patent application refused. So we arrive at a first level of uncertainty: will a patent be granted and if so what scope will it have?

Next, we have to consider territory. In some cases, it may be a Patent Cooperation Treaty (PCT) application. Such an application cannot, by itself, result in a granted patent. Instead, it is best to view PCT applications as placeholders, reserving the right of the applicant to file in national or regional jurisdictions (for example, a US or European patent application) for up to 30 or 31 months, depending on the jurisdiction. So taking this circumstance, we have another level of uncertainty: we do not even know where a patent will be sought, and therefore cannot say whether this overlaps territorially with the interests of the business concerned

Finally, we have the business itself. Start-ups are agile, famous for pivoting. A product may not have been finalised, and indeed product launch may be months or even years away. In such circumstances, it is impossible to say whether the patent could be relevant, and that would be true even if the scope of the patent and the territories it covers are known.

Amid all this uncertainty, what's the best way forward?

Well, the lawyer in me wants to suggest reviewing the application, mapping possible routes to grant and considering how these may or may not impact a nascent business. Depending on the complexity of the patent application, this process can be time consuming and expensive. In addition, in reality, it can be hard to foresee every route forward for an application and such an investigation may prove pointless if the patent application does not in fact proceed to a granted patent in a territory in which the start-up intends to trade.

The other option is scary: wait and watch. However, in some cases, this may be the only practical way forward. We can watch to see what territories the application proceeds in and how its scope changes as it heads towards grant. The scope of the claims of the patent application may even inform the development of a product. And if it begins to look like grant of a patent with a pertinent scope is likely, we can consider mechanisms for challenging patents and patent applications, or indeed if it might be possible to take a licence to the patent or application.

Ultimately, patent applications are just one of the risks start-ups should take into account when assessing the viability of their business. Don't be afraid to reach out though – we'll work with you to consider what action is most suited to your circumstances.

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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ARTICLE
11 August 2023

Embracing Uncertainty: The Only Rational Response To Competitors Ungranted Patents?"

UK Intellectual Property
Contributor
HLK is a global cooperation combining Haseltine Lake Kempner LLP and HL Kempner Partnerschaft mbB and provides a full suite of IP services advising across the entire IPR Lifespan™ in all technical and scientific disciplines. With offices in London, Bristol, Munich, Leeds, Glasgow, and Guangzhou (China), HLK provides IP services across the globe. HLK’s resources and expertise are exclusively dedicated to IP protection: safeguarding the inventions, creative designs, brand identities and other innovations of its clients. HLK advises on the strategy, identification, protection, opposition and appeal, exploitation and enforcement of IP rights, and defends its clients from allegations of infringement by focusing on acquiring competitive advantage for its clients. HLK is privileged to work with some of the most exciting and forward-looking businesses in the world which are at the forefront of innovation and product development in their various spheres.
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