In the world of chemical inventions, any key decision-maker managing a programme of research and development has important decisions to make regarding the subject matter and timing of any new patent applications. Where new inventions are a vital component of any research and development business, correctly identifying and protecting new technology as it emerges is vital in securing the commercial interests of a company and ensuring its value in the eyes of potential investors remains ever increasing.
Scrutinising and identifying subject matter of commercial importance to your own company is fundamental to obtaining valuable patent protection. As such, when choosing inventions to pursue with patent applications, it is important to identify which developments have the largest potential market or represent key improvements in any given technological field. Often patents in these areas provide the most benefit to a company, preventing third parties from using proprietary technology or providing a suite of patent rights which provide the basis for a licencing business model.
Additionally, patent rights which lie within the operational field of a major competitor can be of significant commercial value. Such ‘disruptive’ patent rights often prove a thorn in the side of competing companies, forcing them to seek alternative solutions to continue their operations. The filing of disruptive patent rights can also form the cornerstone of a commercial Intellectual Property strategy, hindering the activity of a competitor to such an extent they are forced to acquire the disruptive patent rights, and the company holding them, for a healthy valuation.
Patentability of Inventions
Once a commercially significant research technology has been identified, the next question to answer concerns its patentability. The key criteria to be evaluated are the novelty and inventiveness of an invention given everything publicly available before the filing of a patent application.
The first of these criteria, novelty, is usually quite simply determined. In general terms, for an invention to be considered novel by any patent office it must include a combination of features which has not previously been publicly disclosed. For example, a composition may be novel if it includes components which have never previously been combined, whereas a method of manufacturing a compound will be novel if it contains steps or processes which were previously unknown. Alternatively, even if a product or compound is known, it is certainly novel to claim this product or compound for use in a previously unknown role.
Once the novelty of a compound or method can be established, the next matter to consider is inventiveness. This is an area in which companies typically struggle in establishing the patentability of an invention, often because they view the matter of inventiveness through the wrong pair of eyes.
When reviewing the issue of inventiveness, patent offices around the world conduct their analysis through the eyes of the ‘skilled person’. The skilled person is an imaginary construct, a person who has read most of the literature in a given technical field but has very little imagination with which to combine this literature to develop new technology. Put simply, the skilled person is devoid of innovation and is very reticent to stray from the teachings of the published literature.
The nature of the skilled person is something which is frequently overlooked by companies when considering filing patent applications for any new invention. Naturally, the decision-makers and researchers considering which new inventions are suitable for patent protection are far more innovative and perceptive than the hypothetical skilled person. As such, there is often a strong tendency for companies to dismiss innovations as obvious and without inventiveness when, through the limited eyes of the skilled person, these developments involve an inventive step. The bar for inventive step is almost certainly lower than you think!
Timing: when to file
After identifying a commercially relevant invention and determining that this invention may be both novel and inventive, the next matter to consider is the appropriate time to file any new patent application. Whilst it is absolutely correct that any patent application must be placed on file before an invention is non-confidentially disclosed, the situation is often more nuanced.
In a modern-day research facility, during the time any invention remains confidential development will be ongoing. As such, every day that passes the invention will become more advanced, and any newly filed patent can focus more clearly on the advantages of the invention and contain more evidence to support these purported advantages. On the other hand, delaying the filing of a patent application provides greater opportunities for third parties to file their own patent applications directed towards the technology of interest. As such, choosing the most appropriate time to file any patent application is a delicate balance taking into account the strength of the patent application, the commercial interests of the business and the activities of third parties.
While timing the filing of a patent application is a delicate balance, there are certain rules which do place hard boundaries on the timespan for filing any patent application. The most commonly known of these is, of course, that a patent application should not be filed once an invention has entered the public domain. With this in mind, if it becomes necessary to publicise any new developments for commercial reasons, any patent application should be filed at the latest on the same day the invention is announced to the public.
At the other end of the scale, patent applications should never be filed before an invention is developed to the stage where it can be placed into effect. The patent system is a bargain between applicants and the government, where in return for a twenty-year monopoly on an invention an applicant has to provide detailed instructions regarding providing the invention within the patent application. As such, if your invention is not sufficiently developed that you can include these detailed instructions when filing your patent application, it is almost certainly too early to file.
Impact of competitors
Third party activities often place further constrictions on the filing of chemically focused patent applications. For example, if two companies are entering into a period of collaboration and joint development, it is often preferred to place patent applications on file before the collaboration commences to ensure each party can firmly establish what intellectual property they owned before working together. Alternatively, if research is occurring in a rapidly developing area of technology, the activities of third parties may result in the filing of patent applications at an earlier stage of development than in other, more mature, areas of technology. Finally, company objectives specifying the filing of a specific number of patent applications in a given quarter or financial period may also affect the timing of any new patent applications.
Deciding on the filing and timing of new patent applications is an increasingly important area for many research directors. However, determining the most commercially relevant inventions stemming from the development process and the most appropriate time to place new patent applications on file as outlined above provides the blueprint for building a valuable patent portfolio for your business, whatever its size.
Dr Thomas Gibb is a UK and European patent attorney. He joined Chapman IP after completing a PhD in Chemistry at Imperial College London. Thomas’ PhD focused on devices for single molecule detection and their integration into microfluidic platforms. Prior to his PhD he obtained both a First Class MA and MSci in Natural Sciences from the University of Cambridge, specialising in Materials Science and Metallurgy.
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