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About

Editor-in-Chief,   Anatole Krattiger

Editorial Board

Concept Foundation

PIPRA

Fiocruz, Brazil

bioDevelopments-   Institute

CHAPTER NO. 10.5   Cost-Conscious Strategies for Patent Application Filings
Editor's Summary, Implications and Best Practices

Krattiger A, RT Mahoney, L Nelsen, JA Thomson, AB Bennett, K Satyanarayana, GD Graff, C Fernandez and SP Kowalski. 2007. Editor’s Summary, Implications and Best Practices (Chapters 10.2 and 10.5). From the online version of Intellectual Property Management in Health and Agricultural Innovation: A Handbook of Best Practices. MIHR: Oxford, U.K., and PIPRA: Davis, U.S.A. Available online at www.ipHandbook.org.

© 2007. A Krattiger et al. Sharing the Art of IP Management: Photocopying and distribution through the Internet for noncommercial purposes is permitted and encouraged.

Editor's Summary

Both public and private sector entities (companies and universities) have to make patenting decisions well before it is clear whether or not an invention has value. It makes business and strategic sense, therefore, to minimize the initial costs of such decisions. In the public sector, where the mission is the dissemination of information, knowledge along with tangible research results and discoveries, university researchers often face pressure to publish, which makes decisions about patenting even more urgent. Hence, balancing the necessity of publishing research findings with the need to keep patenting costs as low as possible is an ongoing challenge, especially as more and more inventions, and other creations, arising from public sector research are increasingly considered as intellectual property worth protecting (for example via patent, trade secret or plant variety protection).

Importantly, decisions and determinations need to consider whether, or not, publications are planned, have been submitted or are imminent. Then, an evaluation should be made as to whether, or not, the invention represents a potentially valuable product. If the invention appears to have significant market potential, then a cost minimizing approach towards patenting is not recommended. However, most inventions fall into the category of questionable or uncertain future value, and hence a cost minimizing approach is an appropriate strategy for patent application filings.

One cost minimizing approach is provisional patent filing. Since 1995, inventors in the U.S. have had the option of filing provisional patent applications up to a year before filing formal utility applications. Crucially, provisional patents allow inventors an extra year of protection, effectively extending the patent period from 20 to 21 years. This, then, puts U.S. inventors on equal footing with foreign (Paris Convention signatory) applicants, who had previously been able to benefit from foreign filing dates to extend their patent protection a year beyond the standard 20 years.

The benefits of provisional applications relative to the costs (generally minimal) make these applications a very useful tool for patent management. Two of the principle benefits of provisional patent applications are cost and simplicity. Provisional applications are not substantively reviewed by a PTO examiner, but are simply checked to ensure that they meet minimal filing requirements. A provisional application also does not require a prior art search. Since these applications are so quick and inexpensive to prepare, they offer an easy way for inventors to establish a priority date for an invention and avoid statutory bars.

The advantages of provisional patent applications include:

  • Preservation of priority date
  • A useful one-year delay
  • Effectively, an extra year of protection
  • Constructive reduction of an invention to practice
  • Preservation of non-U.S. priority date
  • Avoidance of one-year statutory bar
  • Preservation of absolute novelty for foreign filings
  • Application of “patent pending”

Still, there are some limitations associated with provisional patent applications, and one needs to be aware of these. While inexpensive to file, provisional patent applications do not reduce the costs of preparing and filing subsequent utility applications, meaning that the total cost of filing will increase, if only by a small amount. More importantly, provisional applications require a degree of disclosure, so inventors should be sure not to disclose something they wish to retain as a trade secret.

The limitations of provisional patent applications include:

  • Small increase in overall cost
  • Disclosure of the invention
  • Potential loss of trade secrets
  • False sense of security

Furthermore, it is important to remember that:

  • Provisional patent applications may not be amended (in the sense that the scope of claims cannot be increased)
  • Provisional patent applications trigger the time line for PCT and Paris Convention filings
  • Provisional patent applications never mature into patents (unless, of course, a non-provisional patent application is filed)

Also, a provisional application should cover and support all aspects of a corresponding utility application in order for the invention to receive the benefit of the earlier filing date. If certain aspects appear on the formal utility application, but not the provisional application, those aspects will be granted protection based on the later filing date. Finally, an inventor should file a utility application within one year of the provisional application; otherwise, the provisional application will be abandoned and the inventor might be unable to patent the invention in the U.S.

Provisional patent applications are widely used in the U.S. by both domestic and foreign inventors, and with good reason. As long as some attention is paid to their potential drawbacks, these informal applications are a convenient and useful addition to any IP manager’s toolbox.

When publication is imminent and patent protection in foreign countries is desired, a provisional or non-provisional application should be filed in the U.S. before publication. After publication, it will be impossible to obtain patents in foreign countries. A provisional application initially costs less than a non-provisional application (but there are additional costs for moving a provisional application forward).

If the value of the invention is fairly clear, then it makes most sense to file a non-provisional application. In either case, after filing the application, there is a one-year window of opportunity to obtain patent protection in most foreign countries, either by filing a Patent Cooperation Treaty (PCT) application or by filing in specific countries (Paris Union member states) as well as regions of interest. Whereas filing a PCT application can be more expensive than applying in specific countries, it provides more flexibility and time, both critically important for making informed decisions as to where to ultimately seek patent protection.

Chapter 10.5 provides an informative, practical chart to help make cost-effective patenting decisions, though an attorney is always an essential guide in such matters. The stakes are high, and mistakes can be costly.

Key Implications and Best Practices

Given that IP management is heavily context specific, these Key Implications and Best Practices are intended as starting points to be adapted to specific needs and circumstances.

For Government Policymakers

  • In order to realize the commercial potential of international markets for products and processes arising from public sector research investments, membership in PCT provides many advantages. Fostering international opportunities, and then building requisite institutional capacity for seizing such opportunities, will maximize access to global markets. It will also foster international technology transfer, licensing and research and product development partnerships.
  • The option of provisional patent applications allow national institutions, both public and private, tremendous advantages and flexibility.

For Senior Management (university president, R&D manager, etc)

  • Building strong institutional capacity in IP management will enable technology managers to understand the complex array of options that should be considered before both publishing research results or filing patent applications. Development of clear protocols and effective strategies will clarify options and retain and maximize value.
  • It is important to develop institutional policy and guidelines for evaluating inventions and innovations for possible IP protection, whether by patenting or other means. This is important for controlling costs and maximizing value and will involve the concerted inputs of scientists, technology transfer managers, business people and lawyers.
  • Publication of research findings is integral to the mission of most public sector institutions. However, with the increasing need to obtain IP protection for valuable inventions arising from the same research programs, a balancing of priorities is required. Delaying publication in order to retain patent rights will likely be necessary. However, patent application filing should be managed so as to minimize these delays in publication. Provisional patent applications offer one such avenue.

For Scientists

  • Whenever considering the publication of research results that appear to have commercial potential, or other technological significance, first consult with your institution’s technology transfer manager. Premature and hasty publication can have untoward consequences, such as loss of IP rights.
  • If you are about to disclose your research through posters, presentations or the submission of publications, talk to your technology transfer office and discuss the possible advantages of filing a provisional patent application if there is not sufficient time to prepare a full non-provisional patent application.

For Technology Transfer Officers

  • It is important to understand the advantages and drawbacks of provisional patent applications. They can be very useful in controlling cost, and also in providing additional time for weighing options as to whether, or not, it is worthwhile to pursue a full patent application.
  • Provisional patent applications may not be amended, trigger the time line for the Patent Cooperation Treaty (PCT) and Paris Convention filings and never mature into patents.
  • Understand both the advantages and limitations of provisional patent applications. When properly managed they can be of significant use. However, if poorly managed there can be untoward consequences, such as the loss of patent rights.
  • Establish a systems analytical approach for evaluating the optimal course of action for managing patent protection for any given invention arising from your institution’s research programs. When doing this, involve the advice and expertise of both scientists and counsel.
  • Delaying patent applications involves a certain amount of risk. Subsequent prior art might appear that effectively blocks an application. Or, the same invention might be patented by another party (for example, a competitor).
  • For any invention, evaluate whether, or not, foreign patent rights are truly required. This will require a combination of business, marketing and legal analyses.
  • When assembling a patent application, attorney costs can be reduced by providing a cohesive document containing all data and information relating to the invention, such as alternative methods, compositions and/or devices.

Krattiger A, RT Mahoney, L Nelsen, JA Thomson, AB Bennett, K Satyanarayana, GD Graff, C Fernandez and SP Kowalski. 2007. Editor’s Summary, Implications and Best Practices (Chapters 10.2 and 10.5). From the online version of Intellectual Property Management in Health and Agricultural Innovation: A Handbook of Best Practices. MIHR: Oxford, U.K., and PIPRA: Davis, U.S.A. Available online at www.ipHandbook.org.

© 2007. A Krattiger et al. Sharing the Art of IP Management: Photocopying and distribution through the Internet for noncommercial purposes is permitted and encouraged.