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03 June 2019
Patenting inventions is notoriously expensive; however, the benefits of having exclusive rights over an invention far exceed any initial patenting costs. The problem remains that a decision on whether to patent an invention must often be made long before the invention's commercial potential can be judged. As such, it is often difficult to know what to patent.
A tension has always existed between the exclusive nature of patents and competition law, which seeks to even the commercial playing field, thereby preventing a monopoly over rights.
But patenting is about more than creating a monopoly over rights. Instead, it is a quid pro quo – 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 improvements and sharing the same with the public at large.
This article considers whether this fundamental reasoning can be used to inform business decisions on whether to seek patent protection for new inventions.
Patent applications should generally be avoided if publication, rather than commercialisation, is the goal. However, in cases where commercialisation is the aim, evaluating the state of the art often reveals the invention's commercial significance.
Some inventions can be categorised as 'first-of-a-kind' (ie, inventions that cause a directional shift in a specific field) – for example, the changes that additive manufacturing (or 3D printing) brought about in the manufacturing industry. However, these first-of-a-kind inventions are rare and their underlying principles are often not yet developed to a point where they are commercially viable. It has been said that the first patent application (filed in 1984) relating to additive manufacturing was disallowed for lacking commercial applicability. This is often due to the slow adoption of new technologies, or because the finer details required for putting the invention into operation have not yet been developed. Notably, some of the principles of additive manufacturing were developed in the 1980s, with wide-spread industry adoption gaining traction more than 20 years (a patent's lifespan) later.
Patenting a first-of-a-kind invention can be beneficial, especially since the monopoly over rights is often broad and thus improvements and further developments may be protected by the original patent. However, the time and effort it may take for the technology to establish a foothold in the market should not be underestimated.
Today 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 from 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 toward the invention.
When the invention relates to mere variations to the state of the art, the monopoly over rights afforded by patents can generally be overcome by smart design-around practices. In such cases, seeking patent protection might not always be worthwhile.
Often, inventions, although not quite first-of-a-kind, constitute relatively large shifts 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.
Are the potential benefits of having the exclusive rights over an invention worth disclosing the invention's particulars to the public? In some instances, keeping an invention's particulars secret may be worth more than the potential monopoly over rights that a patent could secure.
For example, it is possible to reach the conclusion that:
However, from a commercial standpoint, patenting the recipe would have been an error because it would have become known to the public, effectively limiting the span of the potential monopoly to the patent's lifespan.
Therefore, before patenting an invention, consideration should be given to the difficulty of reverse-engineering it and whether protecting it could best be achieved by keeping it a trade secret, which could result in a monopoly over rights which far exceeds the patent's lifespan
The above considerations are not always clear-cut or ascertainable. Consequently, it is often worthwhile to file a South African provisional patent application, which affords the applicant 12 months 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.
Finally, since South African provisional patent applications are not published, the content remains confidential. If a trade secret approach is later chosen, the provisional patent application can easily be withdrawn.
The materials contained on this website are for general information purposes only and are subject to the disclaimer.
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