A blind date with Patents…

By Megha Anand

Fear of the unknown or realization that you are responsible for what happens next in your life provides the adrenalin rush felt during a blind date.

Similar is the experience when one embarks on the patenting journey, being “blind” on what’s already existing as “prior art” for his/her invention and yet proceeding with the filing of a patent application. However, unlike real life, the after-effects of the “blind date” aren’t experienced immediately, but after gaps of three (3) to five (5) years. By that time it may sometimes be too late to take any corrective action and the patent application may have to be abandoned, not to mention the loss of money spent for filing and maintenance of the patent application.

Typically, the after-effects of a patent application are seen in the form of an attack on the novelty and inventive step of the claims of the patent application. The attack may either be due to official or commercial interests. Official ones are seen by way of “prior art” cited by a Patent Examiner while carrying out the substantive examination. On the other hand, commercial attacks are conducted by third parties who do not want a patent to be granted as it may hinder with their freedom to make/use/sell/license/export the product or process protected in the patent application. The latter attacks are seen in the form of invalidation or revocation proceedings.

Be it official or commercial, these attacks in all probability would be based on “prior art” which exists and is published prior to the filing date of the patent application in question. Hence most patent agents insist that a prior art search or patentability search must be conducted before embarking on the patenting journey. The prior art search is not restricted to the worldwide collection of patent documents but also includes any form of publication associated with the domain similar to the invention.

Due to the ubiquitous nature of the Internet, there are so many documents published online every day that are easily accessible to anyone anywhere. Most inventors fail to protect their intellectual creations either due to monetary limitations or lack of awareness of IP rights. There are also inventors who do not wish to embark on patenting but at the same time do not want their unpublished innovations to be patented by others. Hence instead of filing a patent application, they proceed with “defensive publication” and this trend has been on the rise.

One would be amazed to know that defensive publication as an IP strategy was practiced as early as 1958 when IBM launched “the Bulletin” to publish invention disclosures to prevent others from getting patents on similar technologies to theirs. IBM’s strategy was to create prior art to block future patents or allow very narrow patents. It is believed that The Bulletin was updated between 1958 and 1998 and has been cited over 48,000 times in various US patents.

Another example is Traditional Knowledge Digital Library (TKDL), a pioneer initiative of India to prevent misappropriation of the country’s traditional medicinal knowledge. India provided a multi-lingual database which provides various patent offices access to 290,000 medicinal formulations so that no patent applications using India’s medicinal traditional knowledge is allowed a patent.

There are also various online publication services which allow inventors to upload their technical disclosures, for instance Research Disclosure (http://www.researchdisclosure.com/), Defensive Publication (http://www.defensivepublications.org/), and IP.com.

Recently, on October 3, 2018, IT giant Cisco, in collaboration with MIT, the US Patent and Trademark Office (USPTO) and Google, announced that they have created a Prior Art Archive which will be hosted at MIT. The Prior Art Archive will be open to patent examiners and the public at large to search as well as upload any technical disclosures.

Every invention has a prior art – this is because inventions improve upon the current state of the art. As rightly said by Randy Pausch, “We cannot change the cards we are dealt, just how we play the game”. To apply this quote here: one must not be disheartened if any prior art is discovered during the patent search, but instead devise a strategy to circumvent the searched prior art.

With the knowledge of what exists, stronger patents can be drafted to distinguish the prior art from the invention beforehand. This also helps in increasing chances of grant with little or limited rounds of interaction with the patent examiner.

If the prior art is very relevant then the inventors could rely on more than one IP right to ensure that layers of IP protection are generated for the invention. Hence, if one unfolds then the other layer still protects your commercial interest. For example, if you are inventing a mechanical pencil then the functionality of the pencil can be protected under patent rights, the overall design under industrial design rights and the brand under which the pencil will be sold as trademarks.

If, due to the presence of a relevant prior art, a very narrow patent would exist, then instead of proceeding with a patent application and investing the time and cost, a better strategy would be to connect with the applicant and inventor and sell your idea to them for a one-time royalty or file a patent application and then license it out to the applicant/inventor.

However, none of the above actions can be taken if one is not aware of the prior art that exists for the invention. This not only holds true for patent rights but also industrial design rights and trademarks. Hence, it is always advisable to “look before you leap”.

So, would you still like to go on a “blind date” when it comes to your potential intellectual property rights…?

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Communications at KASS International Sdn Bhd

KASS International is an established Intellectual Property Firm which offers a one-stop solution for IP matters in Malaysia, South East Asia, and worldwide.