Most people have heard of patents, and they usually have a general idea of what they are. Many would say, “you can get a patent if you have invented something”. At a basic level, that’s pretty much right, although there is usually a lot more to it than this.
However, there are quite a number of things that are commonly misunderstood about patents. We come across these often when we speak to people who are new to the patenting process (and even sometimes with people who have been involved with patents for a while).
The following (in no particular order) are five of the most common misconceptions.
1. If I get a patent for my product I will have a guaranteed right to be able to produce and sell my product.
WRONG. The nature of a patent is that it is an exclusive right. That means the owner of an enforceable patent has the right to exclude others from doing (making, selling, using, etc) whatever the patent covers. However, it does not necessarily mean that they themselves have the right to do (make, sell, use, etc) what the patent covers. Indeed, if doing so would infringe another patent owned by somebody else, they may be prevented from doing so, or they may need permission (e.g. a licence).
2. I have a patent (e.g. in Australia) so my invention is protected anywhere in the world.
WRONG. As a general rule, a patent is only enforceable once it is granted, and only in the jurisdiction where it is granted. So, if you want your invention to be protected in a particular country, you need a patent in that country. Conversely, if you don’t have a patent in a particular country (and you are outside the time when it is possible to apply for one) then you will be unable to prevent others from exploiting the invention in that country.
3. I’m not sure that I can afford to seek patent protection now, so I intend to commercialise the product now to generate income and then I’ll come back and seek patent protection in a few years.
OFTEN NOT POSSIBLE. There are very strict timeframes governing when patent applications can be filed. In most jurisdictions, it is essential that a first patent application is filed before there is any kind of public disclosure of the invention. Therefore, if you disclose your invention (e.g. by commercialising it) before any patent applications have been filed, you may have inadvertently destroyed your ability to get a patent. Some countries have a limited period of grace to get around this problem, but many don’t, so the general rule should always be – don’t disclose the invention in any way until a first patent application has been filed.
Also, once a first patent application has been filed (e.g. in Australia), strict timeframes then apply regarding the filing of patent applications in other countries. Generally, the deadline to file patent applications sufficient to cover all countries of interest is 12 months from the filing of the first patent application. So, you can’t file a first patent application (e.g. in Australia), and then wait for a few years for the product to gain traction before seeking patent protection in other markets.
4. If my patent lapses, I can always reapply.
WRONG. As mentioned above, it is generally essential that a first patent application is filed before there is any kind of public disclosure of the invention, and any subsequent patent applications in other countries should then be filed within 12 months. The other thing to bear in mind is that the contents of a patent specification get published as a normal part of the patent application process. Therefore, if the patent application has been published, then the invention it describes has been publicly disclosed. After that, any new application to protect the same invention (i.e. without something additional or “new” in comparison with the original invention) would be invalid because it has already been publicly disclosed.
5. I can get around a patent by changing the product 10%
WRONG. We have no idea where this idea came from. What does it even mean? Still, we hear it all the time.
The fact is this; the scope of protection provided by a patent is determined by the wording of the claims in the patent. Patents often have many claims. However, a patent will be infringed if any one or more of the claims is infringed (so you don’t need to infringe all claims, infringing even one claim is enough). In order to infringe a claim, a competing product or method (etc) must do or have every single essential feature mentioned in the claim. As a result, the question of whether a competitor’s product or method infringes a patent can be a matter of interpretation, and very often it isn’t clear cut.