Note: This is the sixth in a series on IP for Startups. To view previous articles please click here.
What is a patent? A patent is a legal right which enables the owner of a patent (the “patentee”) to prevent unauthorized exploitation of the patented invention in a country or region where the patent is registered. It can be thought of as an offensive right, a right to take legal action against an infringer. It does NOT provide the patentee with freedom to use the patented invention, as a portion of the invention may be covered by someone else’s patent.
Why do you need it? You need a patent to increase your competitiveness and market value. We just said that a patent does not provide the patentee with freedom to use the patented invention. On the other hand, if you are infringing a competitor’s patent, your competitor may be infringing your patent (as you are both active in the same field). This gives you a position where at very least, you can agree to exchange rights (cross-license).
Even if you are not infringing anyone else’s rights, having a patent enables you to enforce your patent against infringers by taking legal action, or to sell them a license, thus providing useful income for your company while at the same time controlling the market (at least in part).
When do you need a patent? Let’s clarify the question. If the question is “when do you need to apply for a patent”, that has been answered in Tip #1. So the question is, when do you need to have a registered patent?
You need to have a registered patent to start enforcing your patent rights against an infringer. That means, that to the extent possible, you should try to look ahead and see where (i.e. in which countries or regions) you plan to be active (for example, by sales and distribution of products covered by your patent); and when you expect this to be.
JMB’s extra Q&A:
Q: I was told that when a patent application is examined, a search will be done and the Patent Examiner will send me the results. If that’s the case, why should I spend the extra money on a separate search?
A: It’s true that you are not required to do a search, but you don’t want to wait for a Patent Examiner to inform you of the prior art. At that stage, which will probably be at least a couple of years after filing the application, you will have invested time and money, only to discover that your invention isn’t quite as patentable as you thought (and told your investors!). To make matters worse, once a patent application has been filed, it’s not possible to add information about variations and additions to what was initially described and shown. The bottom line is that the more you can find out about the prior art before drafting the patent application, the better prepared you’ll be, and the better will be the chances of receiving a valuable patent.
For more on NDAs you are invited to refer to our Tip #3.
Do you have questions about the above information? Are there subjects that you would like to hear about? Let me know!