Patents and Patenting: Balancing Protection with the Public Domain
Topic Guide for Technology Transfer Managers

Abstract: Timing and cost are two key factors involved in patent-filing decisions. This chapter explores mechanisms for delaying the high costs of filing a patent application as long as possible, so that additional information on an invention and evidence of its worthiness can be gathered. The efforts to minimize up-front costs are balanced against the potential need to secure viable patent rights at some point in the future. This chapter begins by walking through the stages of the publication process—from prior to submission, to after publication—and suggests cost-conscious patent-filing strategies that are possible at each stage. The focus is on delaying significant costs until the value of the invention is more certain. The chapter concludes with additional points to consider when making patent-filing decisions.

Abstract: IP (intellectual property) rights can reward innovators and encourage investment in developing new products and services. However, the exclusionary power of IP rights can sometimes have negative effects, making technologies less accessible and, thereby, potentially impeding innovation. To make informed decisions about how to balance access and protection requires an understanding of both the traditional IP rights system (patents, copyrights, trademarks, and trade secrets) and alternative mechanisms for preserving access to technologies. This chapter provides a brief introduction to the public domain and defensive publishing and examines issues concerning the choice behind the choice of whether to publicly disclose or to patent an innovation. Discussing the strategic use of defensive publishing in IP management, the chapter considers both the utility of defensive publishing and its limitations for supporting broad innovation. After an examination of the public domain and how it relates to other open-access concepts, such as open source and the commons, the chapter focuses on the practical considerations involved when using public-domain technologies and defensive publishing to manage intellectual property.

Abstract: The deposit of biological material in support of a U.S. patent application is a mechanism by which an applicant can cure what might otherwise be potentially fatal defects in a patent application and even an issued patent. A biological deposit can, in some cases, satisfy the requirements of enablement, written description, and best mode, and potentially broaden the scope of claims in the event of litigation. This chapter briefly explores the relationship between biological deposits and patentability requirements, what can be deposited, where and when a deposit can be made, and who has access to the deposit.

Abstract: Patent applications should be organized and drafted with a long-term objective that carefully considers the multiple possibilities, and opportunities, of field-of-use licensing. This is particularly the case in the agricultural, pharmaceutical, biochemical, and chemical disciplines, as inventions can have multiple applications that are sometimes impossible to foresee. Technology managers must, therefore, focus strategically, not only on the basic idea of an invention but broadly, in order to consider the various ways such an invention might be put into more widespread and more profitable use. Therefore, the more details, examples and alternatives that are thought through and then disclosed in the patent application, the greater the opportunity for future divisional or continuation applications, as well as future claims that can be exclusively (field-of-use) licensed. By making all of the institution’s licenses, in effect, field-of-use licenses, the technology manager retains the ability to take a possible future use and license it to someone else, maximizing the benefits of the inventions and generating higher royalties for the institution.

Abstract: In order to build an effective patent portfolio, an organization must (1) understand the dynamics of the international patent landscape: how to establish foreign priority, where to file patent applications, and the advantages and disadvantages of pursuing various filing options; (2) determine in which countries and/or jurisdictions the organization should seek patent protection based on its objectives (whether commercial or humanitarian access); and (3) anticipate the possibility of litigation and know what its options for litigation are.

Abstract: Obtaining international patent protection for an invention can present a significant financial commitment for an early-stage company, entrepreneurial venture or not-for-profit organization with a limited budget for intellectual property management. This chapter examines the use of patent application filings under the Patent Cooperation Treaty (PCT) to delay, consolidate, or minimize the costs of patenting overseas. Using the PCT to file internationally enables a patent applicant to delay, generally for up to 30 months after the first (priority) filing date, strategic decisions about the countries in which to pursue patent protection. The delay offers a significant advantage, since it allows the applicant more time in which to evaluate commercial demand for the invention, the likelihood of its success in overseas marketplaces, and the likelihood of obtaining a patent grant in a particular country, prior to filing national-phase patent applications in the countries in which patent protection is sought.

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Abstract: All biotechnology and pharmaceutical products must be approved by both the U.S. Patent and Trademark Office (PTO) and the U.S. Food and Drug Administration (FDA). To maximize the impact of a product’s market exclusivity, the time spent on getting approval should be minimized. This chapter discusses how the interplay between PTO and FDA applications affect the patent approval process, and by extension the patent term, and how these impact the commercial life of a product.

Abstract: A comprehensive intellectual property (IP) portfolio can be of substantial value to both private and public sector entities. Patents are a key element of IP portfolios and must be managed according to the mission, objectives, and motivations of the organization that owns them. Large companies can afford an offensive patent strategy, but small companies may not have the resources for this. Therefore, it is extremely important for private sector entities, especially small- and middle-sized companies, to design and implement an effective and cost-efficient strategy for patent management. For public sector entities, patent strategies will focus on advancing social welfare, and the mission of the institution will therefore drive objectives. A key factor to consider is the method of IP protection: patent, trademark, copyright, or trade secret. The costs of maintaining each of these IP categories are different. Although research institutes and companies will likely wish to reduce costs as much as possible, key technologies still need to be protected properly. A company can reduce costs by focusing the patent protection on those geographic areas where it has business. A university can reduce costs by selectively prosecuting patent applications with broad claim structures, strategically licensing technologies, and enforcing patent rights if and when necessary. To build a strong basis of protection, several forms of IP may be used for the same invention or improvement.

Abstract: A plant variety protection (PVP) certificate preserves a plant variety owner’s exclusive rights to sell, reproduce, import, and export a plant variety and its seed. In addition, a PVP certificate prevents others from claiming PVP or utility patent rights. This chapter walks the reader through the process of applying for a PVP certificate and describes other ways to prevent the unauthorized use or sale of protected plant varieties.

Abstract: In the United States, provisional patent applications can provide an additional year of patent protection, for a total of 21 years from the initial filing date. With such an extension, a provisional application provides parity with foreign applicants who, pursuant to the Paris Convention, may file for a U.S. patent within 12 months of the foreign filing. Provisional applications have both advantages and disadvantages, so proper management is essential. The advantages include the preservation of a priority date immediately after an invention is conceived, a one-year delay for further developing the invention, an extra year of patent protection, and constructive reduction to practice of the invention. In addition, provisional applications provide an inexpensive way to avoid possible statutory bars and preserve absolute novelty for foreign filing purposes. They also enable the use of the phrase “Patent Pending” to mark products embodying the invention. The disadvantages include a possible increased overall cost of obtaining a patent, potential loss of trade secrets, and a false sense of security. An inventor must also file a nonprovisional application within one year, and the subject matter of a nonprovisional application is limited to subject matter in the provisional application.