It is important to realise that a lot of decision-making is needed during the patenting process to create the strategy which is most suited to the commercial requirements. Too frequently adequate thought is not given to each decision resulting in inadequate patent protection, too much patent protection and/or too much money being spent. One should see the patenting process as one which involves constant review and decision-making, and patent attorneys should only be one component in decision-making amongst others familiar with the relevant commercial objectives. The following points do not represent an exhaustive list, but are more based on the situations we have encountered when working with our clients.
1. Treat Each Patent Case Differently
Often companies will take the same approach to every case. However the chances are that some cases are more important than others. Resources should be allocated to each case depending on its importance.
2. Ask Why Each Case Is Being Filed
The reasons for filing each case should be reviewed, especially its commercial value, whether it can be effectively policed and the short term and long term objectives.
3. What Claims Do You Want?
There should be a review of what claims would be desirable to have in that technology area and how possible it would be to obtain them from this case. In one sense this is a review which is semi-independent of the scientific work that forms the basis of the case. One reason for doing this is to see if the claims can be broadened to include competitor activity or other ways of carrying out the invention.
4. How Much Money Is Available?
The company needs to make decisions on each patent case depending on how much money is available both now and over the lifetime of the cases. Patent costs increase with time and so there needs to be some expectation that future patent costs can be met before proceeding with a cases.
5. When To File?
In certain areas, such as biotech and pharma, cases are often filed too early with not enough supporting data. There needs to be a balance with how much data goes in and the need to have an early filing date. Clearly, knowing about competitor filing and publication activities will help you to make an informed decision.
6. How Much Disclosure To Include in the Specification
This is seldom thought about properly. However the amount of disclosure will directly affect translation costs at national phasing. Clearly a certain amount of disclosure is needed to provide support and be the basis for amendments. However exhaustive lists of expression vectors might not be needed.
7. Who Will License or Buy the Case?
Thought should be given to the commercial needs of parties that may be interested in licensing or buying the case. Their commercial objectives may be different to yours and the claim scope should be determined in view of that.
8. Is It Likely to be Challenged?
If it is likely that third parties will challenge the validity of the case in opposition or litigation then the validity of the claims needs to be critically reviewed before grant to ensure they will withstand a hostile attack. Normal Patent Office examination may be too lenient in this situation to obtain the most robust claims.
9. Action Against Third Party Cases
Decisions need to be taken as to the extent to which third party cases need to be monitored and whether action needs to be taken against them. It may be better to agree an amicable approach with a third party rather than resorting to attacking their patents.
10. Whether to litigate?
Whether to litigate is a complex decision that will be very much determined by the amount of money at stake and the predicted chances of success. The emotions of the present moment should not be a factor in deciding to start a litigation that may run for several years.
You may also wish to see related articles Advice to a Scientist Setting Up a Company and 10 Things That Go Wrong With Patent Applications and Patents.