Research and development, as well as developing patentable inventions, need significant resources, and commercializing inventions is an equally substantial and time-consuming process. The management of intellectual property (IP) throughout the product development process is an important aspect of effectively commercializing products and services.
Applicants frequently redirect their focus to other projects that have taken a back seat throughout the patent drafting process once the provisional patent application is submitted, with the anticipation of extending their study into the invention in the near future. The applicant’s commitment to conducting studies into the invention can sometimes be temporarily suspended for months, if not the whole 12-month priority duration, with the applicant scurrying at the last minute to undertake further studies and examinations that were intended throughout the research phase. This might be a wasted opportunity, as we’ll see below. If the study continues and scientific findings are revealed, some administrative and strategic considerations of those findings will be necessary.
Additional considerations along the commercialization pathway include the need for prior art research, comprehending the jurisdictions where expected commercialization would take place, and freedom to operate issues in such jurisdictions. During product development, it’s also essential to keep an eye on other IP rights, as well as practical issues such as time management and adhering to budgets.
“Now that the provisional patent application has been filed, what should I be doing next and preparing for in the future?”. Following are ten points to consider after filing a provisional patent application.
Additional examination and research should be carried out
Typically, an inventor achieves an innovation that solves a problem or satisfies a need, and he or she wants to protect that creation as soon as possible. A provisional patent application is typically filed as soon as possible in order to establish an early priority date and capture that IP before their rivals file for protection for the same or a similar idea. Inventors frequently design an elaborate study strategy during the research phase to examine all of the many combinations and permutations of the invention’s characteristics. However, in the haste to develop the patent specification, there is indeed little or no time to initiate all of this research, resulting in the provisional patent specification only providing a restricted number of instances. In many jurisdictions, post-filing data can be submitted to validate what was disclosed in the provisional patent application, thus proceeding in this manner is not always devastating to the patent. It’s also a good idea to look into any ranges mentioned in the specification that has been expanded from the specific instances and evaluate their limitations. These extra tests can strengthen the disclosure and reduce the risk that the claims will be reduced to specific cases during prosecution, thereby unnecessarily narrowing the claims and allowing rivals to work around them.
Keeping an eye out for other preferred embodiments of the claimed invention
If further research is carried out within the 12-month period after the filing of the provisional application that resulted in an embodiment that is preferable to the disclosed embodiments, the more preferred embodiment should naturally be reflected in the comprehensive patent application. A supplemental provisional might potentially be filed, depending on the commercial significance, to establish an early priority date to the specifications of that more preferred embodiment.
Check the conception of different inventions
Improvement inventions can frequently arise as the “main” invention is further researched and improved after a groundbreaking or revolutionary innovation has been produced. Improvement inventions may contribute to an existing innovation, incorporate new technology, or discover a new application for an existing invention. In the case of the basic chemical example above, it may be discovered later that subjecting the material to a certain gas while in use improves the stated effect. This enhancement might be particularly valuable in some sectors for specialized applications.
If a totally new (improvement) invention is developed after the provisional patent application is filed, it may be advantageous to file a new provisional patent application dedicated to that improvement invention. If the improvement is discovered before the whole patent application is filed, it may be possible to integrate the improvement invention into the complete application and then submit a divisional application devoted to that improvement invention, which has the advantage of saving money overall. If the improvement is identified after the entire patent application has been filed, a new provisional application will be required. The timing of filing that new provisional application is critical since there are certain advantages to filing it before the primary invention is published (i.e., some jurisdictions ignore the main invention from inventive step considerations during prosecution).
Some jurisdictions also give patent rights to cover a modification or improvement to the main invention, such as patents of addition and continuation-in-part applications. Furthermore, if the improvement invention is disclosed before patent protection is requested, the potential of applying for patent protection and relying on the grace period in the relevant jurisdictions may still exist.
Prior art review’s necessity
Practically speaking, one could never analyze all of the essential literature relatives to an invention due to the enormous prior art foundation. However, some efforts should be allocated early on to identifying the relevant prior art and the potential extent of patent claims that may emerge during patent prosecution. In general, it is preferable to know sooner rather than later if the claimed invention is original and substantially innovative. If there is little or no chance of patentability, or if the likely claims are too limited to be economically significant, precious resources can be directed to commercialization and freedom to operate issues rather than the patenting process. Investors are more likely to be drawn to enterprises when earlier art threats have been carefully examined, therefore the business’s marketability is likely to increase.
Utilization of the PCT system
The deferral of the expense of national phase applications, which allows the Applicant additional time to research the commerciality of the invention, is a significant benefit of a Patent Co-operation Treaty (PCT) application. When looking for a licensee for international patent rights, the PCT is an appealing alternative since it maintains the possibilities open in many countries and then allows the licensee to pay the expenses of prosecution in any countries where the licensee is interested.
Another benefit is that a PCT application is automatically subject to both search and examination, providing some information for evaluating the chances of actually obtaining granted patents, as well as their potential scope of protection, before incurring significant filing and prosecution costs.
Risk can also be managed by using the PCT system. If the invention specified in the PCT application is later discovered to be unpatentable due to prior art, an early decision to withdraw/abandon the application might be taken, saving the national phase filing fees.
The PCT system is also flexible in that if the applicant needs more time to gather finances or consider the invention’s potential, the priority claim can be withdrawn before the national/regional phase entry date, thus extending the deadline for filing national/regional phase applications. Of course, this should only be done if the applicant is unaware of any relevant publications.
Ultimately, after 18 months from the first priority date, the patent application will be published. This is a significant milestone in the lifetime of a patent because, after the standard patent is granted, infringement procedures can begin for infringements that occurred after the patent application was published at any time. As a result, publishing will effectively warn competitors.
Interest jurisdictions and operational freedom
It is advantageous to have an early awareness of which jurisdictions are likely to be relevant from a business standpoint. Because patent rights and freedom to operate (FTO) issues are jurisdictional, it is critical to identify the FTO risks in the relevant countries early in the commercialization process.
Collaborations with commercial partners
To bring a novel product or service to market, many inventions rely on commercial partners. It’s critical to collaborate with those partners early in the product development process and to have adequate non-disclosure agreements and commercial arrangements in place that protect foundation IP and project IP.
Other IP rights should be monitored
In addition to patents, keeping a record of trade secrets is important throughout the conception of creative ideas and the R&D stage. Other IP tools, particularly trademarks and designs, become significant throughout the process of commercializing and marketing items or services because they enable customers to identify a product/service of a particular firm and separate it from other comparable products/services. Copyright can also be used to protect important content such as software, product literature and photographs, websites, drawings, plans, and manuals.
Keeping track of deadlines and expenses
The “clock starts ticking” after the provisional patent application is filed, which means that a number of stringent deadlines must be followed in order to keep the patent application “active.” Complying with these deadlines comes with a cost, as additional paperwork must be prepared, reviewed, and/or filed, as well as official fees paid to various patent offices.
You can find the list of international IP Firms here.