Significant resources are involved in research and development and conceiving patentable inventions, and the journey to commercialising an innovation is an equally large and involved task. Intellectual property (IP), and the management of the IP throughout the product development process is a critical factor in successfully commercialising products and services.
Once the provisional patent application is filed, however, applicants often turn their attention to other projects that have taken a back seat during the patent drafting process, with the expectation of continuing their research into the invention in the immediate future. The promise of continuing research into the invention can often be put on hold for many months, or even most of the 12-month priority period, with the applicant sometimes scrambling at the 11th hour to conduct additional experiments and investigations that were originally planned in the research phase. As discussed below, this can be a missed opportunity. If the research is continued, and new developments are made, some management and strategic considerations of those developments is required.
There are additional factors to consider along the commercialisation journey, such as the importance of prior art review, understanding the jurisdictions where intended commercialisation will occur, and freedom to operate matters in those jurisdictions. Additionally, it is important to keep an eye on other IP rights during product development, and there are practical matters such as watching deadlines and budgets.
One might ask the question: "Now that the provisional patent application has been filed, what should I be doing next and planning for in the future?" The following are 10 matters to consider after the provisional patent application is filed.
- Conducting additional experiments and investigations
Typically, an inventor makes a discovery that provides a practical solution to a problem or need, and wishes to protect that development as soon as possible. A provisional patent application is usually filed without delay to establish an early priority date and capture that IP before their competitors file for protection for the same or a similar invention. In the research phase, inventors usually devise an extensive research plan to explore all the various combinations and permutations of the features of the invention. But in the rush to prepare the patent specification, there is often little or no time to conduct all those investigations, with the result often being that only a limited number of examples are provided in the provisional patent specification. Proceeding in this way is not necessarily fatal to the patent because, in many jurisdictions, post-filing data can be provided to confirm what was disclosed in the provisional patent application.
In taking a simple chemical example, an effect may be observed using a particular metal, which may be magnesium (Mg). The attorney drafting the patent specification will disclose and claim that specific example, and might broaden the disclosure to what might also plausibly deliver the claimed effect (i.e., a "principle of general application"). For example, as magnesium provides the claimed effect, it may be a reasonable prediction to expect that similar metals in the periodic table might also work, and the disclosure may be broadened to claim "alkaline earth metals" and the description drafted to include beryllium (Be), calcium (Ca), strontium (Sr), barium (Ba), and radium (Ra). After the provisional application is filed it may be worthwhile conducting additional experiments with all these alkaline earth metals to confirm that they indeed demonstrate the claimed effect. Along similar lines, it may also be useful to investigate any ranges quoted in the specification that have been broadened from the specific examples, and test the limits of those ranges. These additional experiments can bolster the disclosure and lessen the possibility that, during prosecution, the claims are narrowed to the specific examples, causing the claims to be potentially overly narrow, and opening up room for competitors to work around the claims.
- Watching for more preferred embodiments of the claimed invention
Within the 12-month period following filing of the provisional application, if additional research is conducted that results in an embodiment that is more preferred over the disclosed embodiments, the more preferred embodiment should naturally be captured in the complete patent application. Depending on the commercial significance, a supplemental provisional could also be filed to establish an early priority date to the specifics of that more preferred embodiment.
- Watching for conception of different (improvement) inventions
Once a breakthrough or disruptive technology is developed, improvement inventions can often emerge as the "main" invention is further explored and developed. Improvement inventions may add something to the existing innovation or incorporate new technology, or find a new use for the existing innovation. Taking the simple chemical example above, it may be later discovered that exposing the material to a certain gas during use provides an improvement in the claimed effect. This improvement may be particularly useful in specific applications in some industries.
If a completely different, but related (improvement) invention is devised after filing the provisional patent application, it may be beneficial to file a new provisional patent application directed to that improvement invention. If the improvement is discovered prior to filing the complete patent application, there may be the possibility to incorporate that improvement invention into the complete application and subsequently file a divisional application directed to that improvement invention, with the advantage that this approach will save some costs overall. If the improvement is discovered after filing the complete patent application, a new provisional will need to be filed. The timing of filing that new provisional application is important as there are some advantages to filing the provisional application before publication of the main invention (i.e., some jurisdictions ignore the main invention from inventive step considerations during prosecution).
Some jurisdictions also provide patent rights to protect a modification or improvement of the main invention, for example patents of addition in Australia and continuation-in-part applications in the US. Finally, if the improvement invention happens to be published before patent protection is sought, there may nevertheless be the possibility to apply for patent protection and rely on the grace period in the relevant countries.
- The importance of prior art review
Because the prior art base is immense, practically speaking, one can never review all the relevant literature relating to an invention. However, some resources should be dedicated at an early stage into understanding the relevant prior art and the likely scope of patent claims that could result after patent prosecution. Generally speaking, it is better to know sooner rather than later whether the invention as claimed is novel and arguably inventive. If there is little or no prospect for patentability, or the likely claims may be too narrow to be commercially valuable, a decision can then be made to direct valuable resources into commercialisation efforts and freedom to operate matters instead of the patenting process. The marketability of the business is also likely to be improved as investors are more likely to be attracted to businesses where the prior art risks have been thoroughly assessed.
- Use of the PCT system
One significant advantage of a Patent Co-operation Treaty (PCT) application is the deferral of the cost of the national phase applications, allowing the Applicant more time to explore the commerciality of the invention. The PCT is also an attractive option where the intention is to find a licensee for the foreign patent rights, as the PCT keeps the options open in many countries and then the licensee can pay the costs of prosecution in any countries in which the licensee is interested.
Another advantage is that a PCT application is automatically subject to both search and examination, and therefore provides some information for assessing the prospects of actually obtaining granted patents, and their potential scope of protection, before the major filing and prosecution costs are incurred.
The PCT system can also be used to manage risk. For example, if the invention disclosed in the PCT application is subsequently found to be unpatentable in view of the prior art, an early decision can be made to withdraw/abandon the application, thereby avoiding the national phase filing costs.
The PCT system is also flexible in that if the applicant requires further time to raise funds or assess the potential of the invention, the priority claim can be withdrawn close to the national/regional phase entry deadline, effectively extending the deadline to file national/regional phase applications. Of course, the applicant should only take this step if they are unaware of any relevant publications.
Finally, the patent application will be published after 18 months from the earliest priority date. This is an important milestone in the life of a patent as, once the standard patent goes to grant, infringement proceedings can commence in respect of an infringement occurring at any time after the day the patent application was published. Therefore, publication will effectively put competitors on notice.
- The jurisdictions of interest and freedom to operate
It is useful to have an understanding at an early stage of which jurisdictions are likely to be important from a commercial perspective. As patent rights are jurisdictional, so are freedom to operate (FTO) matters, and therefore it is important to understand the FTO risks in the relevant countries early on in the commercialisation process. This is a balancing act, as the specifics of the commercial product/process will likely not be known until the product development process is at an advanced stage, but nevertheless it is still possible and useful to have some early indications of FTO risks. Investors are more likely to be persuaded to invest in the business if the risks in going to market have been assessed and any issues considered and dealt with, for example by potentially licensing or purchasing third party patents, etc.
- Arrangements with commercial partners
Many innovations rely on commercial partners to bring a new product or service to market. It can be important to engage with those partners early on in the product development process, and having appropriate non-disclosure agreements and commercial arrangements in place that cover off background IP and project IP, are essential.
- Keeping an eye on other IP rights
During the conception of innovative ideas and the R&D stage, in addition to patents it is useful to also keep a register of trade secrets. dDring the process of commercialising and marketing products or services, other IP tools become relevant, especially trade marks and designs as they enable consumers to identify a product/service of a particular company and enable them to distinguish the product from other similar products/services. Furthermore, relevant material can be protected by copyright, such as software, product literature and images, website, drawings, plans and manuals.
- Watching deadlines and budgets
Once the provisional patent application has been filed the "clock starts ticking", meaning that a sequence of strict deadlines must be met in order to keep the patent application "alive". There is an associated cost with complying with these deadlines, where for example, additional documents need to be generated, reviewed, and/or filed, and official fees paid to various patent offices. Because finances are always limited, some management of these steps is required, including strategy around when to file patent application(s).
- Filing divisional patent applications
The most common reason to file a divisional patent application is if there are multiple inventions disclosed in the complete patent application, i.e., one of more patents can be divided from the "parent" patent application. However, there may be other good reasons to file a divisional application, for example if the claims were narrowed too far in the parent patent and the applicant believes it is entitled to claims of broader scope. Another reason is if the commercial embodiment is not yet finalised, in which case it is useful to have a pending application such that the claims can be tailored to the specifics of the commercial embodiment at some future time. There may be other good strategic reasons to having a pending divisional application, for example to act as a deterrent to competitors.
Outlined in this article are a variety of important aspects to consider after filing a provisional patent application. The involvement of an IP professional is critical at each stage of the innovation process, for example to provide advice on:
- prior art searching and analysis (patentability and freedom to operate),
- filing of improvement inventions,
- patent strategy (use of the PCT system, divisional applications, grace periods, patents of addition),
- other IP rights (trade mark and design registrations), and
- arrangements with commercial partners.
Spruson & Ferguson attorneys are highly experienced in helping businesses navigate these complexities.
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.