Drafting a Patent Application for Commercial Gain

Greg Whitehead speaks to us on the process of filing for a patent for commercial gain, touching on the structure of the application, the importance of the statement of invention and how a patent attorney helps throughout.

What is the function of a patent application?

Patent applications are interesting documents both in terms of content and function.

As stated in IP Australia’s website, a patent is an exclusive right that is granted for any device, substance, method or process that is new, inventive and useful.  This right is legally enforceable and allows the patent owner to commercially exploit the invention for the life of the patent.

A patent application sets out the details of the invention so that the public is aware of the details and nature of the invention for which the inventor is seeking, or has been granted, exclusive rights.

From a technical perspective, a patent specification should set out full details of an invention in a manner which enables the public to put the invention into practice, or work the invention after the patent has expired or is otherwise no longer in force.

What should a patent application detail?

A patent specification, which is the detailed document that accompanies a patent application and describes the various features of an invention, serves two primary purposes – technical and legal.

From a technical perspective, a patent specification should set out full details of an invention in a manner which enables the public to put the invention into practice, or work the invention after the patent has expired or is otherwise no longer in force.  This represents the obligation imposed by governments on patent owners in exchange for exclusive (or monopoly) rights to the invention over the term of the patent, which is typically a maximum of twenty years.

From a legal perspective, a patent specification should set out in precise detail the boundary or scope of the invention over which the exclusive rights are granted to the patent owner.  This enables third parties, particularly direct competitors and others operating in the same field of endeavour, to understand and determine the limits of the patent rights, and use this information to make informed decisions as to whether or not their planned commercial activities would infringe the rights of another.

A statement of invention then sets out the key or essential features of the invention and the interworking relationship between those features.

What is the normal structure of a patent application?

The standard form of a patent specification commences with an overview of the technical field to which the invention relates to and moves towards an explanation of the background of the invention with a summary of the existing state of technology in that technical field.  The explanation of the background may include details of one or more problems associated with existing technology, as identified by the inventor.

A statement of invention then sets out the key or essential features of the invention and the interworking relationship between those features.  In essence, the statement of invention summarises the core or underlying concept of the invention and thus foreshadows the scope of protection that a patent applicant is seeking to obtain.  The statement of invention may also describe a variety of subsidiary – optional or preferred – features of the invention.

In addition, it is important not to deliberately omit any key aspects or features of an invention from a patent application.

After the broad statement of invention, a detailed description of one or more non-limiting examples are usually provided to ensure that there is sufficient detail of the invention for a person of ordinary skill in that technical field to understand and make the invention.  The detailed description is often made with reference to a set of drawings.

A patent specification ends with a set of claims.  Once a patent is granted, the claims define the boundary or scope of protection afforded to the patent owner.

Patent applications pose a lot of importance for inventors; what ‘boxes’ must they tick in their application to ensure they have a strong chance of being granted a patent?

The number one requirement when considering patent protection is to ensure that the details of the invention remain confidential and that there is no commercial use of the invention prior to filing a patent application.

In terms of the content of a patent application, it is important to clearly describe the key features of the invention and the advantages that these provide.  It is also necessary to describe the invention in sufficient detail to allow others to make and/or use the invention.  All potential variations of the invention which use the idea behind the invention should be covered (not just the currently proposed form).

The inclusion of these potential variations is critical to not only provide potential for a broader scope of protection but also offers flexibility to amend the application to deal with issues that may arise through the application process, including during examination before the Patents Office.

In addition, it is important not to deliberately omit any key aspects or features of an invention from a patent application.  This is contrary to the requirements of the patent system to disclose the invention to the public in return for a period of exclusivity to the patent owner.  Failure to make a full disclosure may ultimately result in an invalid patent.

A patent attorney will work collaboratively with an inventor to properly understand the invention and draw out the core concepts and the proposed strategy for commercialising the invention.

How important is a patent attorney in this process?

A patent is balanced between the requirements for obtaining a valid patent (i.e. the invention described in the patent must be new and inventive), and those for defining a boundary of sufficient scope to cover the invention and potential copycats. It is the work involved in achieving this balance that defines the value of patent attorney services.

In the same way that an inventor is an expert in their chosen field, a patent attorney is an expert in patent law and practice.  A patent attorney can draw on their knowledge and experience of the patent system to frame a patent application for maximum benefit for the inventor.

As in any specialist field, there are many subtleties to the patent system.  And as the saying goes – the devil is in the detail.  Without an in-depth knowledge of these subtleties, a patent application is unlikely to be fit for purpose and, in many cases, would likely give away too much ground to competitors.

A patent attorney will work collaboratively with an inventor to properly understand the invention and draw out the core concepts and the proposed strategy for commercialising the invention.  The ability of patent attorneys to work in such a collaborative manner on often complex inventions arises from the fact that patent attorneys typically hold tertiary qualifications and have relevant industry experience in a scientific or engineering discipline.

It can also be important to be aware of the context in which the invention is used within a particular industry such as, for example, the particular stage of a supply chain.

The technical background of a patent attorney is supplemented by study and practical training in intellectual property laws and practice, including those relating to patents.  It is this combined technical and legal skillset that enables patent attorneys to prepare patent applications of significant commercial value.

In what ways do you determine an appropriate scope for protection? Does this impact the inventor’s application?

To properly frame a patent application that will offer the maximum potential benefits to an inventor, it is critical to gain a sound understanding of the inventor’s commercial objectives before preparing the application.  Understanding the commercial objectives from the outset provides a basis for determining the structure of the patent application, particularly the claims which will define the scope of protection.

For example, the nature of the invention and the related commercial strategy will determine whether a patent application should be directed towards a system, an apparatus, a method, a process, or a combination of these.

It can also be important to be aware of the context in which the invention is used within a particular industry such as, for example, the particular stage of a supply chain.  Thus, a consideration of the relationship with relevant upstream and downstream parties will play a part in determining how best to frame a patent application.

Initially, when a patent owner or applicant makes an ‘improvement’ to an invention which is the subject of an existing patent or patent application, it should be dealt with in the same manner as any new invention.

For these reasons, a patent application should be prepared from the viewpoint of a potential competitor seeking to work around and avoid the patent.

How are improvements to an invention dealt with under the patent system? What is the best way to go about this?

Initially, when a patent owner or applicant makes an ‘improvement’ to an invention which is the subject of an existing patent or patent application, it should be dealt with in the same manner as any new invention.  That is, the details of the improvement should be kept confidential until the commercial position and related patent strategy has been established.

The key features of the improvement should be read or compared against the content of the existing patent application to assess whether or not the improvement is covered by the existing patent, or if there is potential to amend the existing patent application to better cover the improvement.

Should it be determined that the existing patent application does not cover, or does not adequately cover, the improvement and the commercial potential of the improvement is deemed to be significant in its own right, a new patent application could be prepared and filed to cover the improvement.

It will, of course, be necessary that the improvement detailed in the new patent application be new and inventive/non-obvious over the existing patent or patent application as well as any other relevant prior art information at the time of filing the new application to meet the requirements for patentability.

The strategy of pursuing independent protection for commercially significant improvements assists in building a robust and flexible patent portfolio that can keep an inventor ahead of competitors as they enter the market, particularly those seeking to leapfrog off the groundwork laid by the original inventor.

Greg Whitehead

Principal

Shelston IP

Level 9, 60 Margaret Street, Sydney NSW 2000 Australia

P +61 2 9777 1170  |  M +61 405 454 226

GregWhitehead@ShelstonIP.com

www.shelstonip.com

Greg Whitehead of Shelston IP is an expert in patent preparation and strategy with a proven track record of successfully preparing, prosecuting and enforcing commercially relevant patent rights.  Greg’s work has led to significant commercial outcomes for Shelston IP’s top tier clients, enabling them to establish and maintain dominant market share and related competitive advantages across a broad range of science and engineering fields. 

Shelston IP acts for world-leading innovators who are continually developing new and clever products ranging across chemical engineering solutions, electrical and electronic systems, medical devices, mining equipment and pharmaceuticals.  These innovative companies rely on a portfolio of patents, amongst other business tools, to maximise their return on investment in research and product development. 

 

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