Patenting Strategy: When to Patent?

Patenting of inventions can be notoriously expensive; however, the monopoly attracted because of it has the potential to exceed, by far, any initial patenting costs. The problem remains that a decision on whether to patent an invention often has to be made long before the commercial potential of an invention can readily be adjudged. How then should one decide what to patent and what not to patent?

A tension has always existed between the monopoly that attracts by reason of patents, and competition law, which seeks to even the commercial playing field, thereby preventing monopolies.

But patenting is about more than a monopoly – so it has been advocated for many years. It is about a quid pro quo (or “something for something”) – a temporary monopoly in exchange for knowledge transfer and the advancement of the state of the art. The monopoly is the proverbial carrot that entices innovators and investors to continue pursuing improvement and sharing same with the public at large.

Perhaps then, this fundamental reasoning behind patenting can be used to inform business decisions on whether or not to seek patent protection for new inventions.

We propose a two-pronged approach:

Does the patentable improvement over the state of the art have commercial potential?

Sometimes, the subject-matter of patent applications is somewhat academic, without direct commercial application. Patent applications should be avoided if publication, rather than commercialisation, is paramount.

However, in cases where commercialisation of the invention is the aim, an evaluation of the state of the art often reveals the commercial importance or significance of the invention.

Some inventions can be categorised as first-of-kind: inventions that cause a directional shift in a specific field. Think for example of the changes that additive manufacturing (or 3D printing) has brought about in the manufacturing industry. These first-of-a-kind inventions don’t come by often.

However, the underlying principles of these inventions are often not yet developed to a point where they are commercially viable. It has been said that a first patent application (filed in 1984) relating to additive manufacturing was disallowed for lacking commercial applicability. This is often due to slow adoption of new technologies, or since the finer details required for putting inventions into operation have simply not yet been developed. It is interesting to note that some of the underlying principles of additive manufacturing were developed in the 1980’s, with wide-spread industry adoption only gaining traction more than 20 years (the lifetime of a patent) later.

Patenting of first-of-a-kind inventions can be very beneficial, specifically since the monopoly might be very broad, so that improvements and further developments may all fall within the monopoly. However, one should not lose sight of the time and effort it may take for the technology to establish a foothold in the market.

These days, most inventions can be categorised as incremental improvements or variations to the state of the art. A decision to seek patent protection for an incremental improvement should be evaluated by considering the advancements or advantages that may result by reason of the improvement. These advancements or advantages must have a commercial impact. Put differently, when presented with the option to choose either the state of the art or the invention, at least a portion of the market must be inclined towards the invention.

 When the invention relates to mere variations to the state of the art, the monopoly afforded by patents can generally easily be overcome by smart design-around practices. In such cases, seeking patent protection might not always be worth-while.

Often, an invention, though not quite first-of-a-kind, constitutes a relatively large shift from the state of the art. These inventions are often the best candidates for patenting, as further incremental improvements, or ancillary or additional inventions by the inventor, will already be protected by the patent. In such cases, the need to file patent applications for each further such development is often obviated.

Should the fundamentals of the invention be made available to the public?

Is the potential monopoly that may accrue by reason of the patent worth disclosing the particulars of the invention to the public? In some instances, keeping the particulars of an invention a secret may be worth much more than the potential monopoly that a patent would have secured.

Here we can take Coca Cola as an example. One can readily reach the conclusion that the recipe of the famous soft drink would have been patentable at the time of its first conception, that the patentable improvement or difference over the state of the art would have been significant, and that the monopoly accruing by reason of the patent, would have had great commercial value.

And yet, the recipe of the soft drink would arguably have been the worst patent ever, from a commercial point of view. This is so, because the recipe would have become known to the public effectively limiting the span of the potential monopoly to the lifespan of the patent.

Therefore, before proceeding with the patenting of an invention, one should consider the difficulty of reverse-engineering the invention, and whether protecting the invention could best be achieved by way of keeping the invention a trade secret, which could result in a monopoly far exceeding the lifetime of a patent.

Buying time through South African provisional patent applications

The above considerations are not always clear-cut or readily ascertainable. Consequently, it is often worthwhile filing a South African provisional patent application, which affords the applicant 12 months within which to formulate a proper patenting strategy.

South African provisional patent applications are relatively cost effective, while the intervening 12-month period is often sufficient for applicants to determine the commercial viability of an invention, and to get a feel for the market’s receptiveness for it.

Lastly, since South African provisional patent applications are not published, the contents remain confidential. Should a “trade secret” approach be opted for later, the provisional patent application could easily be withdrawn.