3 strategies for protecting your invention during the patent pending stage

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Selling an invention after filing a patent application, does not unduly affect the patent application process.   Therefore, many patent applicants begin commercialising and selling their invention during the ‘patent pending’ stage.

A commercially successful invention often attracts one or more potential patent infringers.  However, during the ‘patent pending’ stage, an applicant does not have enforceable rights, and while labelling a product ‘patent pending’ is often useful in deterring many potential infringers; it may not deter all potential patent infringers.

Fortunately, there are a number of tactics that a patent applicant may employ to make full use of the patent which they expect to have granted.

The following is a summary of approaches that one may take when their invention is patent pending to protect their invention.

1. Note potential infringers

If someone is potentially infringing an ultimately granted patent, then an applicant could simply note potential infringers and forward to them a copy of the corresponding patent application so that they are aware of the existence of the pending patent rights.  In this instance, it is important that the application is careful not make any ‘unjustified threats’ to the potentially infringing party as this may result in fines.  Once the patent is granted, the owner may fully pursue the alleged infringer(s).

2. Expedite examination

Typically, patent applicants do not wish to expedite examination because it brings the cost of examination forward and decreases the period in which the applicant has to gain funding prior to incurring further costs.  However, in the cases where someone is potentially infringing a ultimately granted patent, the applicant may wish to bring forward examination in order to obtain a granted patent faster.  Once the patent is granted, then infringers may be pursued.

3. File an innovation patent

A third option would be to file a (divisional) innovation patent application including claims tailored to cover an infringing product.

An innovation patent is a type of patent available in Australia only.  It has a shorter 8 year term (in comparison to a standard patent that has a 20 year term) and requires a lower level of inventiveness.  Innovation patents do not undergo substantive examination prior to grant, only a formalities examination.  Therefore, in order for an innovation patent to be enforceable, certification must be requested after grant.  Essentially, certification involves examination of the granted innovation patent similar to the examination process that standard patent applications undergo prior to grant.

Despite the above process, innovation patents are generally quicker to have certified and are more difficult to invalidate when compared to standard patents.  For this reason, innovation patents are often used as an enforcement tool, in particular when a standard patent application is still pending.

If you have any queries about patent infringement, and the potential infringement of your yet–to-be granted patent application, then please do not hesitate to contact me.

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