When not to get a patent…some things to consider

I love writing patent applications so it pains me to write this post.  However, in certain circumstances it just makes the most business sense to not get a patent.

Sometimes you think that you had a great idea, then perfected it by reducing it to practice, but after a prior art search, found out that someone beat you to the punch.  In this case, of course, you clearly cannot get a patent.  Don’t despair!  Maybe after more research you might come up with an improvement that can be patented.

Maybe the patent would be almost impossible to enforce.  It can be difficult to tell if a competitor is using a patented process for the simple reason that you don’t have access to their manufacturing facilities.  Sometimes you can tell from a commercial product how it was made, but now always.  (See Baker Petrolite Corp. v. Canwell Enviro-Industries Ltd., [2002] (F.C.A.) for a case on point; this decision dealt with anticipation and obviousness but I cite it in this connection because in this instance it could be determined from the product itself how the patented process of sweetening sour gas could be conducted since a component used for the purification was still in the product).  In cases where you clearly can’t tell from the product how the process was conducted, you might consider not filing a patent application.  Keep in mind though that this needs to be weighed against other factors to assess the value of patenting.  Is the process a game changer?  Is it core to your business?  If the answer to either one of these questions is “yes”, then I’d strongly consider getting a patent.

Product patents are the easiest to enforce.  This factors strongly in favour of patenting.  However, maybe the product is not that important to your business or only offers incremental improvements over your competitor’s products.  You could file a patent application to block others from using your product, but if the product has limited commercial value, then this business strategy might not make sense.  On the other hand, if the product offers a competitive advantage, but is not core to your business, you could get a patent and license it to another company or use it as a bargaining chip in a negotiation.  As you can see, a number of factors need to be considered before making a decision to patent a product.  Of course a game changer technology that is key to your business is a no-brainer.

Money and properly prioritizing your patenting efforts are also big factors that need consideration.  Maybe a new product or process is enabling technology for your business, but there are bigger fish to fry.  Start with patenting the most important innovation first and then tackle those inventions that might have value to your business, but not enough to be central to the success of your company.

Also, what is valuable enough to warrant patenting and what gets relegated to the bottom of the priority list can change as your company’s focus grows and shifts over time.  Meet regularly with your patent agent to go over new technologies and discuss which ones are the highest priority to patent.  When I worked at a small start-up company between 2000-2003 I was bombarded with inventors at all levels in the organization wanting to get their inventions patented.  I put all the inventions on a spreadsheet and presented the list to senior management once a month.  We then worked together to prioritize what needed to be patented first.  Of course, this is just one way to select what needs to be patented.  It is important to be resourceful and creative in this regard.

Is money a big consideration?  You can prepare a patent budget on your own from on-line tools.  Try www.inovia.com. If you sign up with them, you can get a quote for patenting in a variety of countries, together with a convenient break-down of fees.  This is an invaluable resource.  A patent agent can also prepare these quotes for you, usually at no cost.

Keep in mind also that some inventors can get patenting in the head.  As mentioned in an earlier post, an invention can turn into an inventor’s brain child and a patent embodies that genius.  This can cloud a person’s ability to judge if getting a patent serves the best interests of the company.  Beware of this.  I have come up with my own bad inventions and fallen prey to this myself.  Needless to say, I didn’t get a patent.  Also, scientists in an organization often (but not always) can’t publish in journals.  The only way to get a publication is to patent their endeavours since patent applications publish after 18 months from the initial filing date (i.e. priority date).  It is understandable that in this scenario an inventor will want to get a patent to further their career.  Unfortunately, getting a patent in these circumstances may not be what is best for the organization, although it can greatly increase morale and retain employees.  The value of retaining a key inventor might be a factor that tips the balance in favour of filing a patent application. This speaks to the human component of an organization (which are powerful forces), which cannot be overlooked either.

I’ve always felt that a CEO of a company should set the patent strategy for an organization with the help of a patent agent (with in-house experience) and senior employees.  They know the company best and its strategic direction.  Having quarterly meetings with a CEO and other important decision makers is important to establish what inventions make the cut for patenting and which ones do not.  The ability to navigate all the complex factors at play is essential and a CEO is usually best equipped to do so.

Any thoughts on the above from people involved in patenting innovation is welcome!

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