Patenting

• Author: Claas Junghans
• Pages: 35-67

3

Patenting

Claas Junghans

This chapter is concerned with the process of transforming the results of research

into a valid and valuable patent family. Ideally research is performed with the

needs of the patenting process in mind, with a clear understanding of the compe-

titive environment of the planned development and of the freedom to operate

granted by the scope of existing patents. IP generation is rarely the only considera-

tion to drive research however, and innovation, by its nature, occurs in an unsched-

uled fashion. Nevertheless incorporation of the patent process into research is of

great benefit in making the process cost-effective. “Thinking patents” is a hollow

business idiom until the entire machinery of IP generation is an integral part of

the overall business process, from a project’s initiation to its conclusion. The addi-

tional expense of this integrated approach is more than offset by its advantages;

granted applications, reduced legal fees and minimised litigation.

This chapter addresses how to progress from poorly defined investigation to a

rigorously researched and defined patent. As is emphasised throughout this book,

this owes as much to basic planning and economic reasoning, as it does to excel-

lent legal technique and management of the formalities. Scientific research and

technical development is many times as expensive as patenting, and this focus on

careful planning can equally be applied to the field of research leading up to

invention. Patenting is an extension of this inventive process, and the fewer errors

that are introduced into the pipeline, the lower the downstream costs. Rigour, for-

ward thinking, and continual review are universally cost-effective business tools.

3.1

Preparation

Whilst an invention is made by an inventor, responsibility for patenting lies with

the applicant. Mechanisms of patent right transfer, modalities of employee-inven-

tion regulations and the issue of invention theft are treated in Chapter 4. Al-

though it is to the applicant that this chapter therefore predominantly addresses

itself, in the interests of coherence, it is important that the technical expertise of

the inventor is retained throughout the patent process.

35

3.1.1

Planning

Once it is suggested that a patentable invention has been made, the applicant

needs to draw up a plan as to how to proceed, paying particular attention to the

costs of the application. An important postulate of IP generation is that the cer-

tainty of costs should be balanced by the plausibility and scale of revenue. It will

often not be possible to make accurate forecasts of sales or licence fees on future

products or technologies, yet an approximation, however imperfect, should initial-

ly be made.

To be economically meaningful, this approximation will be inclusive of both

direct costs such as attorney and office fees, and also indirect costs such as man-

agement time, prototyping, marketing and business development. The cost model

should be based on a cost of capital that incorporates the applicant’s approach to

risk, and this model will look very different to an established business with a

strong history of patenting, than to a lone but brilliant inventor. The patent-know-

ledgeable and cash-generative business has attorneys at hand, an established inter-

nal patent process and is able to consider the net value of a patent or invention

with relative immunity from the obligation of short-term cashflow.

The lone inventor or start-up company must focus attentively on their cash posi-

tion as well as on overall value. Remaining cashflow positive throughout patent

drafting, license negotiating and potential prosecution takes considerable man-

agement resource. Entrepreneurial myopia and a lack of experience means that

the lone inventor is very much more likely to miscalculate this cost-revenue bal-

ance, or indeed to perform no calculation at all.

As a consequence of unrealistic commercial expectations and poor budgeting,

unsupported inventors frequently abandon applications relatively early in the pat-

ent process. Ironically this typically occurs at the EP stage, when the patentability

of the invention has been established but the cost of transfer to national offices

becomes overwhelming. The applicant is left with both financial loss and the dis-

appointment that the invention will not be commercialised.

This emphasises the importance of continual reassessment of the cost-benefit

balance. Initial calculations may be imprecise but will become successively more

meaningful as new market, competitive and technological information emerges.

The applicant must be careful both to perform this forecast and to respect its

result; “sunk costs”, expenses that have already been incurred are not relevant in

valuing continued development and application.

3.1.2

Assembling Material

If this planning determines that a patent application should proceed, the appli-

cant should gather and sort as much relevant data as possible. The eventual appli-

cation will detail the invention itself, but data relating to competing or associated

technology should be factored into the drafting process. Not all material will nec-

3 Patenting36

essarily end up in the application, but the late introduction of information adds

significantly to the expense of patent application.

The objective of the patenting process is a clear definition of the invention

against a well-researched background of prior art. The material assembled at this

stage can thus be divided into two groups: data positively describing the invention,

and data which delineates what was known before the invention, thus forming

the state of the art and defining the “space of patentability”. A detailed under-

standing of competing and related technology distinguishes the invention from

what is the state of the art, and thus optimizes the chance of obtaining a strong

and valid patent.

Material Describing the Invention

In a first step, the “positive” data describing the invention is gathered. This mate-

rial comprises the abstract idea of the inventor, its concrete manifestations or

“embodiments” as laboratory examples or technical drawings, ideas as to how the

abstract invention may additionally be used or embodied and speculative excur-

sions into the realm of what may be possible but not yet realized.

Hard data and examples All data, examples and drawings that exemplify and

illustrate the invention should be presented, even if the inventor believes them to

be redundant or overlapping. Differences between examples or manifestations of

an invention may represent as-yet unseen inventive elements that would other-

wise be lost.

Examples and hard data ultimately form the backbone of the description on

which subsequently claims rely. Data also demonstrates the extent to which the

inventor had the invention in hand at the day of filing. This may be particularly

important during US “interference” procedures. During drafting the inclusion of

examples will need to be balanced against the application length, in order to mini-

mise translation costs. In the collection phase, however, all data should be

included and assessed.

Abstractions The inventor or applicant can include a generalisation of, or the

abstract principle behind the concrete examples of the invention. Whether or not

the “idea” behind the invention will become a claim depends on the existing prior

art.

Planned future developments An important part of the material collection is the

plan for future developments of the invention. How can the invention be

improved further? What elements could be added? Are these developments

already attainable or is further R&D activity needed, and if so, can an estimate be

made of the time and cost of development and of its likelihood of success?

All ideas and plans should be discussed with the attorney, but not all of these

will be included in the draft. It is important though, for the attorney to understand

the future direction of research in order to outline a patent strategy that goes

3.1 Preparation 37