British Science Week: Patent Filing Strategies, and the Importance of Portfolio Growth

This is the second in a series of articles exploring how intellectual property (IP), and in particular patents, can support growth of your business.  The first part of this series investigated the importance of patents in early-stage growth of a business.  Following on, the second part builds on that knowledge, delving into the content of a patent application, a patent filing strategy, and the importance of building a patent portfolio.

Once a potentially patentable invention has been identified, attention should turn to drafting and filing a first patent application.  Ideally, an experienced patent attorney should be involved from the innovation capture stage, particularly if research is ongoing.  However, it is recommended that they are engaged in the drafting process to ensure that a robust and defensible application is produced. 

Anatomy of a patent application

The basic elements of a patent application are (1) the claims; (2) the description; and (3) optional drawings that help illustrate the invention. 

Patent claims define the scope of protection offered by the patent.  The first claim will typically be the broadest, and sets out the essential elements that are require to make the invention work.  Following that are a series of numbered paragraphs focusing on specific embodiments, such as a commercial product.  Essentially, if your broad claims lacks patentability, then these embodiments act as a fallback position for the application to be limited to one of the narrower claims.

A patent application must disclose the invention in a manner that is sufficiently clear and complete for someone to carry it out.  This helps others build on its teaching, and may reward the applicant with a patent and the associated market exclusivity.  This is known as the ‘patent bargain’.  The level of information to satisfy this requirement is dependent upon the field of technology, and the general knowledge know to the public at the date of filing the application.  Once an application has been filed, no further information may be added to it.  It is therefore of paramount importance that it is done correctly the first time.

Patent filing strategy

An initial application is typically filed at the patent office of the country in which the applicant resides.  The date on which it is filed is important, as only documents publicly-available the day before the filing date (i.e., the prior art) may be used to assess the patentability of the invention.  This is why it is crucial not to disclose an invention at least until an initial application is filed. 

Yet, patents are territorial.  Patenting innovation in a single country is unlikely to support the business strategy of most companies.  A patent application must be filed in each country in which protection is sought.  To help with filing patent applications in multiple countries, the patent system offers a period of 12 months from the initial application to lodge the application at other national patent offices of interest.  If those later-filed applications reference the earlier application – a process known as ‘claiming priority’ – then the patentability of those applications will be judged based upon the prior art available before the filing date of the original application, providing the later application relates to the same invention.  This essentially gives the applicant 12 months to decide on the countries in which patent protection should be pursued. 

Alternatively, there is the option to file a Patent Cooperation Treaty (PCT) application, or an ‘international application’, within that 12-month period.  A PCT application is essentially a single application that covers the vast majority of countries in the world.  A key reason to file a PCT is that it delays having to make a decision on the countries of interest until two-and-a-half years after the initial patent application is filed.  At that point, the PCT is converted into national patent applications in the countries of choice, each of which inherits the filing details and content of the PCT application.  Filing applications at multiple national offices can see IP costs increase dramatically, therefore proceeding via the PCT route gives a company  extra time to secure additional funding in order to finance this PCT conversion process. 

Once national patents are filed, each application independently proceeds through the examination process.  Once a national patent examiner is happy that the invention is patentable, a patent will be granted. 

Building a patent portfolio

Innovation never stops.  As a company grows and develops, so too should its patent portfolio.  Building a broad portfolio will not only improve a market monopoly, but instils confidence in existing and future investors.  Over time, a product should be covered by multiple patents, each ideally protecting a different innovative aspect.  This makes it challenging for a competitor to copy the innovation as they run the risk of infringing multiple IP rights.  Alternatively, they would need to invalidate numerous patents in order to access the market.  In this case, each layer of patent protection can be seen as insurance for the market monopoly, deterring competition, and strengthening a business’ USP.

At GJE, we have a wealth of experience in providing strategic IP advice to enable growth of your business, and help it to flourish.  For more information, please see contact details of the authors on their web profiles: Ian Jones, Samantha Wallworth, Brenna Howley, Kessia Hawkins, Tom Blackburn, Amy Mead.