Protecting Your IP – Thinking Strategically

Protecting Your IP – Thinking Strategically

What is a patent?  

In general, when we talk about “patents,” we mean what are technically known as “utility patents,” which provide protection to inventions.  A patent is a grant of an exclusive right to the owner of an invention to prevent others from making, using, or selling the invention without the owner’s permission for a set period of time, normally 20 years.

In order to obtain a patent on an invention, the invention must meet three criteria: 

1. It must be useful – that is, it must have some actual industrial use. For example, ideas cannot be patented, only actual realizations of ideas; laws of nature cannot be patented; and inventions that violate laws of nature such as perpetual motion machines cannot be patented.
2. It must be novel – that is, there must never have been a prior disclosure of every aspect of the invention available to the public prior to the filing of the patent application. Unpublished or secret documents cannot affect the patentability of an invention.
3. It must be inventive – that is, even if there has never been a disclosure of the exact invention, the invention must contain some aspect that would not have been “obvious” to a person of ordinary skill in the art. For example, if some of the components of the invention are disclosed in one document and the remainder in a second document, and the combination of the components would lead to the invention, an examiner may decide that the invention is “obvious” because a person of ordinary skill in the art would have understood the possibility of combining the two disclosures to obtain the claimed invention.

A patent contains two portions:

• a specification, which includes a description of how to make and use the invention, including illustrations, diagrams, flowcharts, etc., as necessary. The specification must be sufficiently clear and detailed that a person of ordinary skill in the art would be able to make and use the invention on the basis of the specification;
• one or more claims, which list the components of the invention and their relations, thereby defining the invention and the scope of protection of the patent.

It is very important to remember that a patent is a locally granted right; a patent that is granted in one jurisdiction is valid only in that jurisdiction, and the determination of the patentability of an invention is performed separately in each jurisdiction in which the application is filed.  For example, a patent granted in the U.S. does not give you any rights in Japan, and vice versa.  The practical results of this restriction are that you must file a separate application in every jurisdiction in which you wish patent protection; that an invention that is patentable in one jurisdiction may be unpatentable even in principle in another; and that the patent examiner in one country may disagree with the conclusions of a patent examiner in another country.

Why do I need a patent to protect my invention? 

A patent can be an important part of the business model of the owner of an invention.  Patents are generally used in one of two ways:

Offensively – If you want to control the manufacture and marketing of your invention, then a patent can be an effective offensive weapon, since a patent prevents others from manufacturing, selling, or using your invention without your permission.

Defensively – A patent can be an excellent defensive weapon as well; since a patent prevents others from making or using the claimed invention, a patent can be used to block a possible competitor from entering the market.

How do I obtain a patent?

One important point to remember is that a patent is a local right.  That is, in order to obtain protection in more than one jurisdiction, a separate patent application must be filed, and a separate patent obtained, in each individual jurisdiction in which patent protection is sought.

The journey from invention to patent comprises several stages, and can take years from initial application filing to final patent grant.  In most cases, the process goes through three stages:

1. The First Year (“Paris” stage): Almost every country in the world is a party to the Paris Agreement. Under the Paris Agreement, a patent application remains unpublished (and hence secret) for the first year after its filing date.  More significantly, all countries to the Agreement recognize the filing date of a patent application in one country that is party to the Paris Agreement as the effective filing date in any other country that is party to the agreement.  That means that your initial patent application filing does not have to be in every country in which you wish to obtain patent protection – one is enough.  The “Paris” filing is your way of “planting the flag” to establish your priority as the first entity to file an application for the invention described therein.
2. The PCT (“international”) Stage: At the end of the “Paris” year, if you want to continue with the prosecution of the application, you will have to begin to make strategic decisions about the direction you want to take. Most applicants continue their initial filing with an “international” filing under the Patent Cooperation Treaty (PCT). As of 1 November 2025, 158 countries were party to the PCT.  Any application filed under the PCT allows the applicant to delay filing in any country party to the PCT (in most cases, for 18 months after the PCT application is filed, or 30 months in total from the initial filing).  The main advantage of filing a PCT application is that the invention will be examined for patentability and a detailed report citing relevant prior art will be provided, so that a reasonable estimate of the likelihood that your invention is patentable will be obtained before you will need to invest the time and money in national phase applications, and you will only have to pay for a single examination.  In addition, the PCT process gives you an additional year and a half to decide whether or not to file national phase applications, raise money, etc.

2A. Publication of the application:   18 months after the initial filing, the application will be published.  At this point, the application ceases to be confidential; more significantly, once it is published, it becomes part of the “prior art” and can be cited against any patent application that you file after its date of publication.

3. National/regional phase: As was mentioned above, a patent is a local right granted by a national patent office (or, in some cases, by a regional patent office that has jurisdiction in more than one country, for example, the European Patent Office). Thus, in order to obtain patent protection, it is necessary to file a separate application before each patent office with jurisdiction over the territory in which you wish patent protection.  In general, national phase applications are filed at the conclusion of the PCT phase, unless of course you wish to file directly from the initial filing or if the initial filing is itself a regular filing in its country.  The application is examined at the national or regional patent office; if it is rejected as being unpatentable, it is possible to file a response that attempts to overcome the rejection by amendment or argument.  Once the application is accepted, it comes into legal force.  Depending on the jurisdiction in which the and subject matter of the application, the examination can take anywhere from 6 months to 5 years to complete.
4. Expiration of patent rights. A patent has a 20-year term from its application date. In some jurisdictions and under some circumstances, extensions to this basic patent term can be exchanged.  In most jurisdictions, the patent continues to remain in force after its grant only if renewal fees are timely paid.  Some jurisdictions require annual payment of renewal fees, while in others, renewal fees are assessed at intervals of several years.  Some jurisdictions such as Israel allow the patent owner to pay a single (usually discounted) fee to keep the patent in force for the entire 20 year period of validity without having to pay renewal fees.

Strategic Thinking in the patent process

As is shown in the time line, prior to the filing of a patent application, there is a “Stage Zero” during which all of the necessary preparations for filing are performed.  Because as the process moves forward, there is less and less opportunity to make changes in the content of the patent application, and once the application is published, it can be cited as “prior art” against any future applications that you might file, in many ways, Stage Zero, in which the overall strategy for the filing is devised, is the most important.  Before the actual preparation of the application begins, it is vital to have an overall strategy in mind.

• The first and most important question is, “What is the actual invention?” What differentiates your invention from what is known?  What technical problem does it solve, and how is your solution an improvement over what already exists?
• The next question is, “How does patenting your invention fit into your business plan?” That is, what is your goal with the invention – for example, do you intend to manufacture and market it yourself; to license the rights to manufacture and market it; or to sell the invention and the rights to it to a third party?  Do you have the funds to manufacture and market it, or will you need external investment?  At what stage in the patent process will you be applying for external investment – as seed money before the invention is fully developed, during the patent process, or only after a patent is granted?
• Even in the first stages of preparation of the application, it is important to think about who and where is your market for the invention? Do you intend to patent it in a single country or in multiple countries? 
• Do you intend to file a single patent, or will this patent be part of a larger family that protects inventions that are related to this one?
• In light of the above considerations, we strongly recommend that before you invest money in preparation and filing of a patent application, you have us perform a search of the prior art. This search will help you to estimate whether your invention is likely to be patentable, and whether you are likely to be able to obtain a patent with broad protection or whether you are likely to need to settle for a narrowly defined patent.

These are a few examples of the strategic considerations for preparing a patent.

We will be more than happy to discuss your invention with you and to develop with you a strategy that will maximize the value of your patent portfolio and the return on your investment in patents.  Our goal in the process is thinking strategically to enable us to write tactically.

How much will it cost? 

At each stage of the patent application process, there are three types of expenses:

• Patent attorney (PA) fees – these are the costs for the PA to prepare the application for filing;
• Paralegal fees – these are the costs for the work involved in filing the application or sending it to a foreign associate for filing;

Official fees – these include filing fees; publication fees; issue fees; and, at the national phase stage, renewal fees for maintaining the application (in some countries) and for maintaining the patent once it has been issued.  The following table gives a very general rough estimate of what you can expect to pay at each stage.  Note that for national phase filings, the filing and maintenance fees must be paid separately for each jurisdiction in which you want patent protection

Other ways to protect your IP

A utility patent provides protection for an invention, that is a process, apparatus, or composition that has an industrial use.  There are other kinds of intellectual property, and ways of protecting them:

Design Patent – In contrast to a utility patent, a design patent protects the ornamental design of an invention, that is, the physical appearance of the invention that does not have any industrial use.   It is possible to obtain both a utility patent and a design patent for the same invention, one to protect its use and the other to protect its appearance.

Trademark – A trademark is a symbol that uniquely identifies the origin of a product.  A trademark may be a word or phrase; a visual symbol; or a combination.  Note that a trademark does not indicate the content or composition of a good, but rather only serves to confirm that the product originates with the trademark holder.

Copyright – Copyright protects original works of authorship such as books, plays, photographs, works of art, etc. that have been fixed in a tangible form of expression.  Copyright protects the form of expression itself, but not the underlying ideas.

Plant breeders’ rights – A breeder of a new variety of cultivated plant can obtain protection for the new variety if it is new, different from any other variety, uniform, stable, and has a unique name.  Some countries such as the United States provide plant patents for asexually reproduced plants other than tubers.

Industrial secret – It is also possible to “protect” an invention by keeping it secret.  Since patents require the public disclosure of the invention, and only provide protection for a limited amount of time, it may be in the interest of the owner of the invention to keep it a secret.  Note that if a competitor reverse engineers a secret invention, the original inventor may have little recourse.