Top 10 Things That Go Wrong With Patent Applications and Patents

1. Filing the Patent Application Too Late

Developing technology is often a race, and if someone else gets there first it can then be very difficult to get broad claims.  Filing patent applications as soon as possible should be a priority.

2. Missing a Deadline

There are many many deadlines to follow in the patenting process.  A lot of the work of a patent attorney is to follow and remind about deadlines.  Have a system for knowing all outstanding deadlines, and perhaps mention them at the end of every email about a patent case.  Deadlines are sometimes missed when more than one organisation is involved, for example when responsibility for paying renewal fees is given to another company.  Deadlines can also be missed when patent cases are transferred from one patent firm to another.  These are situations where more care than usual is required.

3. Making the Invention Look Obvious

One should be careful about the way one describes the relationship between the prior art and the invention in an application.  It is easy to make the invention look obvious when it would not have been at the priority date.

4. Having an Unclear Term in an Independent Claim

If one must rely on a potentially unclear term, then try and place it in dependent claims, with alternative definitions in the description.  Some Patent Offices can be very strict on added matter so that deleting a term from an independent claim could be seen as adding matter.

5. Drafting Claim Scope Too Narrowly

One can always narrow claim scope during prosecution if one has to, but attempting to broaden claims can cause problems.  Claims which are overly-broad can lead to unity problems though, so careful thought needs to be given to claim scope.  Every term in the independent claims should be looked at before filing to see whether it could be broadened.

6. Not Having Enough Fall Backs

Amendment is almost always needed during examination, and one must try to consider all the different ways the claims could be limited to overcome prior art that will be identified in the search.

7. Filing the Application Without Enough Data

In biotech and pharma cases it is quite possible to end up with the situation where the claims are not adequately supported by the data or it’s not apparent that the problem has been solved.

8. Publically Disclosing an Embodiment in the Priority Year which is not in the Priority Application

Ideally no public disclosures should happen in the priority year, but if they have to, then the priority application should be reviewed to see whether there is a need to file a supplementary priority application in view of the intended disclosure.

9. National Phasing in Too Many Territories

National phasing is costly, and therefore one should be very selective in choosing the territories in which one proceeds.  Patent attorneys will not necessarily know what the best markets are for your invention, and so you should ensure you take advice from the correct sources.

10. Not Abandoning Cases Which Are No Longer Commercially Useful

The portfolio should be constantly reviewed and cases which are no longer needed should be abandoned as soon as possible.  Preferably this should be done before national phasing to save maximum costs.  Resources spent maintaining cases might be better used filing new ones.

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