The Economic Objectives of Protection

• Author: Claas Junghans
• Pages: 19-34

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The Economic Objectives of Protection

Claas Junghans

The purpose of this chapter is to enable the reader to clearly position patents with-

in the context of business strategy. Whilst patents are technical in substance and

legal in structure, their pursuit requires the consumption of both human and

financial resources, and the decision to allocate these resources is a rational

economic one.

Before delving more deeply into the technical and legal elements of patenting,

the reader is therefore advised to invest considerable thought in the overall busi-

ness purpose of patenting. It is likely, and highly advised, that the reader will

employ a patent attorney to both draft applications and provide counsel on patent

strategy. The attorney’s ability to translate business needs into a patent portfolio is

dependent on the applicants communication of clearly defined economic objec-

tives. In the absence of these goals, even the most qualified and diligent of patent

attorneys will make assumptions about the applicants needs. The results are at

best unnecessary costs, and at worst, bad patents that do not match the economic

drivers of the application.

The generation of intellectual property is a complex endeavour, requiring invest-

ment of both time and money. Much can be done to optimize the yield of this

investment if clear objectives are stated early in the process, and a plan is made to

attain these objectives. Many resources are poorly spent because such common-

place advice is not followed. Applicants will be in a variety of situations with

regards to their industry, technology, financial circumstance and competitive envi-

ronment. Hence, the detailed objectives in patenting discussed here, will be differ-

ent for each inventor or applicant. Nevertheless, standard elements of situations

can be identified and a combination of these elements will, to some degree,

resemble the scenario in which readers find themselves.

This chapter studies two key fundamental elements of patent strategy; the route

of filing, and the breadth of claims. It discusses each element and considers the

factors that drive value generation for each.

2.1

Filing Strategy

The applicant must determine the timing of application and the number, and

sequence of countries in which an invention will be registered as a patent.

2.1.1

When to File?

The simple answer as to when to file the first application is: as early as possible

after having obtained substantial proof of an invention. The greatest risk for any

applicant is that of being pre-empted by a competitor filing a similar or closely

related invention. A competing invention submitted earlier may render the appli-

cant’s claims unpatentable and may ultimately mean that the applicant is subject

to exclusion by the competing patent.

Chapter 3 discusses the criteria for the sufficient disclosure of material. It is

important that the application discloses not only an idea but a workable technical

solution to a real problem. If this criterion is not satisfied, the patent may not be

issued, or, if approved, may be liable to attack by competitors. US law has espe-

cially stringent requirements as to sufficient disclosure. This is important when

filing in the US through the USPTO, or indeed if any application filed outside the

US is to be used for claiming priority before the USPTO.

2.1.2

Where to File: National Offices and International Treaties

To the unitiated there appears an intimidating myriad of routes to achieving

patent protection. Fundamentally, the process is a national one; application in a

territory is followed by local examination and, if all goes well, the grant of a patent,

which is locally enforceable. To reduce the inefficiencies of multiple patent appli-

cations however, there exist a number of international treaties that define how

countries can work in concert to consider, grant and enforce patent applications.

These treaties are identified in Box 2. As discussed below, however, these create a

range of options for the applicant.

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