Wise move to make patent applications

Iit is generally a good idea for companies to protect their IP

A fundamental principle of the patent system, in exchange for the right to seek the 20-year monopoly granted to successful patent applicants, is publication of the application. This means all the information contained within an application becomes publicly available around 18 months after filing.

In the UK, applications are published with a search report. The UK IPO’s consultation sought in part to ask whether this practice might change, for some applications, bringing potential benefits both to the UK IPO and those filing “defensive” patent applications. Those filing such applications may not necessarily wish to obtain a patent for an invention. There may be other commercial reasons for doing so, for example to ensure no-one else can obtain a patent.

Presently a shortage in examiners and a backlog at the UK IPO is causing delays in the examination of the content of applications, in favour of the searching of other applications. Although the UK IPO is trying to recruit 150-200 new examiners to deal with workloads in the long term, some have suggested alleviating the backlog in the short term may be motivating the UK IPO’s proposal to publish some applications without first searching them.

Publication of the patent application serves two main purposes. Firstly, it puts the public on notice that a patent is sought and the search report gives an indication of the likelihood of grant. Although a patent owner can only sue other parties for infringement after their patent has been granted, once granted, it can retrospectively sue for infringing activity that took place after publication of the application. Secondly, publication allows others to learn about the invention, potentially stimulating further technological development.

Not everyone filing applications actually wants a granted patent. Although it is generally a good idea for companies to protect their IP, doing so may not be right for everyone, which is where defensive publication becomes relevant. Some find the costs involved with obtaining and enforcing patents unaffordable but the cost of defending a claim for infringement from a third party patent is also dangerously prohibitive. One way to lessen the risk of being on the receiving end of an infringement suit for doing something related to an innovation that someone else has subsequently patented is to describe that innovation in a published document, eg a patent application. Doing so reduces the chance of the third party obtaining a patent because the invention would have to be patentable over all existing publications.

Consider a hypothetical example: an inventor makes a new ice cream from a different strain of strawberry. Since it seems new it may be patentable, although to be patentable it should also not be “obvious” which is potentially debatable here. Whilst the innovator has neither the money nor the inclination to seek or enforce a monopoly on his ice cream, he doesn’t want anyone else to try to stop him from selling it. So he files a British patent application, fully describing his ice cream, which is later published. A “defensive” publication of this type means nobody should be able to obtain a British patent and then use it to sue our inventor.

Unless there is something surprising about the ice cream, the patent application is unlikely to be granted. But this wasn’t the primary objective: the application was filed to obtain a “defensive publication”. As an application that it considers stands no chance of grant, the UK IPO would rather not search this application. In its consultation document, it ponders whether applicants of what appear to it to be ungrantable patents proceed simply because they wish their applications to be published. Defensive or not, the European Patent Office (EPO) estimates that 80 per cent of current technical knowledge is held not in academic papers, but in patent literature, including published applications. A further statistic from the EPO is that up to 30 per cent of all expenditure on research and development is apparently wasted on redeveloping inventions already documented in existing patent literature.

Searching patent literature is advisable for all innovative companies, not just to avoid being sued by proprietors of valid patents but to avoid reinventing technology in the public domain.

• Donald McNab is a chartered and European patent attorney at Marks & Clerk www.marks-clerk.com