Patent Filing Strategies for Inventions

Patent Strategies (rotated)The patent filing strategy that our office may recommend will depend upon the circumstances of the client seeking the advice and may be modified in response to changing circumstances. There is not one size that fits all. To illustrate the concept of patent filing strategy, we will describe the circumstances of one particular client. The client contacted us when a machine that he was building was nearing completion. At that stage he was not sure where there was a market for the machine and had not had an opportunity to test the machine to ensure it would work as intended. However, within a week, the machine was to be running and he was going to be putting information up on his website and contacting representatives of companies he thought might have an interest, some of which were outside of North America. We advised him that public disclosure prior to filing for a patent would result in loss of patent rights in many countries; only a small number of countries, including Canada, the United States and Australia, allow a patent to be filed after public disclosure has taken place. The machine was complicated and he did not have drawings. Given the imminent public disclosure, our first patent filing recommendation was that a series of photographs be taken of the machine and a U.S. “provisional” patent application be filed to preserve his patent rights in foreign countries. We advised him that he would then have up to 12 months to file further patent applications claiming priority from his first filing. Approximately 10 months later, we followed up with him to see how things were progressing with the marketing of his invention. He advised that he had sold three machines: one to Australia, one to Europe and one to the United States. He felt that he could sell more machines if he could reduce manufacturing costs, and he was exploring manufacture in China. In view of this information, our second patent filing recommendation was that an International Patent Application be filed under the Patent Cooperation Treaty (PCT). We advised him that a PCT Patent Application would preserve his ability to obtain a patent in approximately 150 member countries for a total of 30 months, as calculated from the date of filing of the U.S. provisional patent application. We further advised him that he would receive an International Search Report with a Written Opinion that would be an indication of whether his patent application met the basic criteria for obtaining a patent (being whether the idea is the right sort of subject matter, and is both new and unobvious). At the end of 30 months, he would have to decide in which of the 150 countries he wished to pursue patent protection. The International Search Report and Written Opinion indicated that the patent application did in fact satisfy all of the criteria for obtaining a patent. As the 30 month deadline draws near, we have been in touch with him to determine in which countries he wishes to have “national entry” of his international patent application. Manufacturing is now taking place in China. At this stage, some major companies have shown interest in not only purchasing machines, but also purchasing his patent rights. Large companies move slowly and they are unlikely to act before 2017. Unfortunately, his deadline for filing national patent applications is sooner. In view of this information, our third patent filing recommendation is that patent filings be limited to preserve the financial resources he needs for having more machines built, while keeping alive the prospect of a sale of his patent rights to a large company in 2017. We have received instructions to complete “national entry” of his patent application in three countries, which happen to be the three countries where the large companies that have expressed interest are located.