Legal challenges in patenting: keys to successful patent prosecution

The granting of patents is a fundamental process for the protection of industrial property, allowing inventors and companies to secure exclusive rights to their innovations. However, this process faces several legal challenges that can make it difficult to obtain and maintain. In this article, we will explore the main legal obstacles to patenting and present key strategies for successful prosecution.

The main legal challenges in the granting of patents can be divided into five main groups:

1. Patentability criteria

One of the biggest challenges in granting a patent is complying with the patentability criteria, which, although harmonized, vary according to each country’s legislation, but generally include:

Novelty: The invention must not have been previously disclosed in any form, not even by the inventor himself, although in some countries there is a grace period, whereby the inventor has been able to disclose his invention before filing the patent without this being an obstacle to obtaining the patent. This grace period is 12 months for the United States and Japan, among other countries, but is not valid for European countries, so that the inventor’s own publication prior to the date of the patent application makes a patent potentially slid valid in the United States and not valid in Europe anymore.

Inventive step: It must represent an advancement in the state of the art that is not obvious to a skilled person in the relevant field. The assessment of inventive step is the one that usually gives rise to most discussions between the examiner and the applicant or their representatives.

Industrial application: The invention must be susceptible to industrial manufacture or use.

The difficulty lies in proving that the invention meets these criteria, especially when there are prior patents or similar technologies.

2. Search and vetting

The search and vetting process is crucial to avoid conflicts with existing patents. This conflict can be summarized under two aspects, the first is to avoid infringing the rights of third parties and the second is to patent the breakthrough that the development has brought about. Patent offices carry out an exhaustive analysis to determine whether the application meets the legal requirements for patentability, but not regarding the possible infringement of third-party rights.

Without proper research, the application may be rejected for lack of novelty, or lack of inventive step, so it is advisable to initially make a background study by a professional who can advise applicants whether their invention is patentable (patentability report), whether their patent may infringe third party rights (infringement report) and if conclusion is that the invention is patentable, decide the most advisable strategy for drafting the invention.

3. Drafting the application

The drafting of a patent application must be precise and detailed, which represents a technical and legal challenge. Errors in the description of the invention or in the claims can weaken the protection granted or even lead to the rejection of the application, since, once the text of the patent has been filed, no patent office will allow the text to be amended in such a way as to expand the technical content described.

The drafting of the patent specification, summary and claim set should be carried out by an agent specialized in patent drafting, since, although it is the inventor who knows most about their invention, it is the patent expert who knows most about patents and how to draft them, the result of the collaboration of both being the synergic effect obtained, for an optimum result in its protection.

There are many patents drafted by inventors, perfectly described, but very poorly protected, as they are obviously not specialists in drafting claims, which means that competing companies can easily come along making similar products, which cannot be claimed against due to lack of adequate protection.

4. Administrative procedures and costs

The patent prosecution process can be lengthy and costly, with government fees, attorney fees and translation costs for international applications. In addition, administrative procedures can vary significantly from jurisdiction to jurisdiction, requiring specific knowledge of each country’s regulations.

The problem deriving from a too restrictive choice of countries is that, by not extending the protection of an invention at the right time, the invention may not be extended later, losing possible protection in some territories, where third parties will be able to use the invention freely.

On the contrary, over-protection of countries leads applicants into a maelstrom of processing costs that can strangle many budgets without appropriate results.

Therefore, an appropriate choice of countries of protection is an essential task of a good patent advisor.

5. Oppositions and litigation

Patent applications may be subject to third party objections and oppositions by third parties who consider that the invention does not comply with legal requirements or infringes prior rights. In addition, once granted, the patent may be challenged in opposition proceedings or litigation.

Keeping a watchful eye on our competitors’ applications and grants can save us time and money, because if we act on third party observations during the prosecution of a patent, the examiner may agree with our reasoning and refuse the patent at an early stage.

Once a patent is granted, oppositions may be filed, in which we can now actively intervene in the proceedings and obtain a refusal or at least a limitation of the invention, so that it no longer affects us.

The last legal resource at stake would consist of judicial procedures by means of actions culminating in the refusal of a patent. Needless to say: taking action in the early stages of patent prosecution and before the patent offices is always much cheaper than court proceedings.

Strategies for a successful prosecution

There are five basic strategies to be considered for the successful prosecution of inventions to be protected, such as the following.

1. Conduct a comprehensive background search

Before filing an application, it is essential to perform a thorough research on prior patents and similar technologies. This allows you to identify potential conflicts and fine-tune your application to increase the likelihood of grant.

It is very important to carry out this background research in advance as it can save R&D costs, as well invention protection costs, as the fees for filing a patent application are expensive, especially when you want to protect your invention internationally.

Identifying the state of the art closest to the developed invention also allows us to properly focus on the claims of the invention to be protected and will save us prosecution costs, such as the ones involved in replying to official actions, which will result in a faster processing of the invention.

2. Draft a clear and detailed request

Having a specialized patent drafting team is key to ensuring that the description and claims are accurate and comply with legal requirements.

If the patent drafting technician is someone who speaks the same technical language as the patent applicant, this will allow them to much better describe the invention, avoiding problems of lack of clarity.

Patent drafting technicians combine in their expertise the technical knowledge to understand the invention and the legal ability to draft the legal document that constitutes the descriptive memory and claims of the invention. Therefore, the synergy between the inventor and the patent drafter ensures that the text of the patent application is perfectly designed to protect, by complying with the formal and substantive requirements, so that the invention complies with the patentability requirements and the maximum possible protection is obtained in view of the state of the art.

3. Choosing the right protection strategy

Depending on the nature of the invention and the target market, the best protection strategy should be considered, whether at national, regional or international level.

If the matter of invention has been developed in Spain, the patent applicant will be obliged to file their priority invention in Spain, being able to choose between three possible options, filing a Spanish patent application, filing a European patent application or filing a PCT international patent application.

With any of the eligible options, once the patent application has been filed, a so-called priority right is generated for 12 months to extend the application internationally, claiming priority from the first filing made on the invention.

If we believe that the invention is only going to have an impactin Spain, perhaps the most appropriate thing to do is to start with a Spanish patent application and within 12 months consider extending it internationally either as a European patent, PCT or directly to the countries of interest.

If we expect or wish to target the European territory and market and/or worldwide, it might be a good idea to start with a European application covering the 39 countries of the Convention on the Grant of European Patents (EPC) or to start with a PCT patent application covering the 158 countries.

In any case, after the first deposit, the applicant will have a period of 12 months to decide on the territorial extension of their patent application and the most appropriate way to carry it out.

4. Preparing for possible conflicts

It is advisable to anticipate possible opposition and litigation with solid documentation and well-founded legal arguments. Having a defense strategy in place is crucial to maintain the validity of the patent.

On some occasions, third parties’ patents close to our invention will be detected, so it will be advisable to make an initial effort to identify the most relevant points that coincide with our invention, foreseeing to talk about these closest patents in the background of the invention of our application, enhancing the existing differences, as well as the improvements that our invention provides over that state of the art. Hiding such documents makes no sense whatsoever, as the examiner or examiners who review our invention may cite them in the Search or Examination Report when it is carried out by the patent offices.

Another fact that is often difficult to understand is that, even though a patent is granted, by putting the product or object subject of that patent protection on the market patented, this product or object may still infringe prior rights of third parties that may be in force, hence we always recommend applicants to make differentiated reports, such as:

1. Patentability Reports that reveal whether the object can be protected by an invention
2. Freedom to Operate Reports that reveal whether marketing a product, whether patented or not, may infringe rights of third parties that are in force.

5. Maintaining the patent and monitoring the market

Once a patent has been granted, it is important to pay maintenance fees and to monitor the market for possible infringements. In case of violations, legal action must be taken to enforce exclusivity rights.

It is essential that this work is carried out by the owner of the invention, as they will be the first to detect whether or not objects similar to his protected product are being marketed, in which case the claim begins with a written warning and withdrawal of the product from the market, and if a satisfactory response is not given, the necessary actions can be brought before the Courts of Justice to prohibit the sale or marketing of such products.

Patents have a maximum lifespan of 20 years from the date of application, while utility models only last half, and during their legal life, both are subject to the payment of annual maintenance fees, which, if not paid, lapse. It is therefore very important that every time the object of an invention is improved or evolves, the patent attorney is given the chance to determine whether this new development continues to fall within the protection already available, or whether a new patent should be filed to cover said development.

Conclusions

Patenting is a long and complex process that faces multiple legal challenges. However, with proper planning, rigorous research and a well-defined protection strategy, it is possible to overcome these obstacles and ensure success in patent protection.

Having the support of IP experts can make all the difference in obtaining and defending a patent, ensuring its value and effectiveness in the marketplace.

If you want to know how to effectively protect your inventions and avoid common mistakes in patent prosecution, our team of experts is ready to advise you. Contact us and we will be glad to accompany you through the whole process.