Understanding IP – Some Common Misconceptions

An IP portfolio can be an important asset to a business. However, misconceptions abound. Let’s debunk five common misunderstandings:

“We have a patent, so we have the right to exploit our invention.”

Unfortunately, this is not the case. In fact, a patent only provides the right to stop others from doing something – it does not provide the right to do something yourself. Before you exploit your invention, you need to check to see if there are patents owned by third parties that might cover your activities (so called freedom-to-operate searching).

“We have worldwide patent protection for our invention.”

Whilst it is possible to file an international patent application, this does not result in a “worldwide patent”. There are strict deadlines by which the international patent application must be converted into separate national and/or regional patent applications. In fact, the cost of filing and maintaining a patent family in many countries can be prohibitive and is typically only an option for multinational companies with large IP budgets. However, this does not mean that small companies with relatively low IP budgets are unable to obtain appropriate patent coverage. With an effective IP strategy in place, small companies can ensure effective protection by proceeding with patent protection only in a few key countries and/or regions.

“Our patent provides us with a monopoly on our company’s product.”

Whether this is the case or not will depend on the exact wording of the patent. A careful analysis of the patent’s claims is needed to determine whether the scope of protection is appropriate to prevent competitors from designing around the patent. This may need to be done country by country, as the scope of protection provided by patents across a patent family may vary. Care also needs to be taken to look at what a patent ultimately protects once it is granted. It is all too easy for companies to lose sight of IP when product design changes are made during development. It may be that a patent does not actually cover the product it was intended to protect. Regular review of the IP portfolio alongside a company’s business plans is required.

“We have not applied for any patents because it is not possible to obtain a patent for a computer program”

Many opportunities are lost because of this misconception. The European Patent Office alone grants thousands of patents a year for computer programs.

“Now that we have a patent, it will be easy for us to keep our competitors off the market.”

Enforcing IP rights is often a complex business. There are significant costs and risks associated with litigation. Settling a dispute through licensing or other agreements is normally the preferred option, with suing a competitor for infringement of an IP right as a last resort.

J A Kemp LLP acts for clients in the USA, Europe and globally, advising on UK and European patent practice and representing them before the European Patent Office, UKIPO and Unified Patent Court. We have in-depth expertise in a wide range of technologies, including Biotech and Life Sciences, Pharmaceuticals, Software and IT, Chemistry, Electronics and Engineering and many others. See our website to find out more.