An ongoing eight-year legal battle between UC Berkeley (UCB) and the Broad Institute illustrates the importance of a patent when it comes to protecting your intellectual property rights. In 2013, UCB published a paper on revolutionary gene-editing techniques that scientists could recreate in a test tube. Only months after, the Broad Institute published research showing these gene-editing processes would be useful in cells.
Both entities filed applications to patent this gene-editing technology, called CRISPR/Cas9, but the Broad paid an extra fee to have its application reviewed sooner. Because UCB neglected to do the same, the Broad was granted patent rights to CRISPR by the U.S. Patent and Trademark Office (USPTO). UCB argued that the Broad’s findings were obvious in light of UCB’s paper, which was published first, and a long war over claims to CRISPR ensued.
Stories like this show us how a patent challenge can easily arise, even with large organizations that have considerable experience in the field of genetic research. How can your company protect its intellectual interests with a patent? At Miller IP Law, we’re devoted to educating and empowering our clients with valuable knowledge and legal resources. Keep reading to learn how patents work and how they can help protect your business’ assets.
Related: Is Your Invention Worth Patenting?
Here is How Patents Work
What exactly is a patent, and how does it work? A patent is an exclusive property right to an invention. Whether a company can claim those rights is determined by a governing organization, like the USPTO. Generally, those rights are only valid in the country or region in which the patent was filed.
This right protects the interests of the company for 20 years (design rights can also be patented. In the U.S., a design patent lasts for 14 years). The 20-year protection period starts at the time the inventor files the patent application. The U.S. is a first-to-file nation, which means whoever files the patent first receives the intellectual property rights over others who have filed applications for the same invention.
An invention is defined by the World Intellectual Property Organization (WIPO) as a product or process in any field of technology. This can range from products as simple as a can-opener to a chip device that enables Bluetooth communication. A governing organization that grants patent rights will examine the patent application carefully to make sure the invention is novel, non-obvious, capable of industrial application (not just a theory), and sufficiently disclosed in a complete patent application.
Related: What is Not Patentable?
Where Do You File for a Patent?
A patent is granted by a regional or national patent office that handles patents for a country or group of countries. Here’s a list of regional patent offices that are currently in operation:
- African Intellectual Property Organization (OAPI)
- African Regional Intellectual Property Organization (ARIPO)
- Eurasian Patent Organization (EAPO)
- European Patent Office (EPO)
- Patent Office of the Cooperation Council for the Arab States of the Gulf (GCC Patent Office)
The five largest patent offices in the world are the USPTO, the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Patent Office (KPO), and the National Intellectual Property Administration (NIPA) of China. Together, this group of large offices is often referred to as IP5 and grants an average of 1 million patents per year. However, there are also patent offices across the world outside of the IP5. Check out WIPO’s directory of intellectual property offices to learn more.
What if You Can’t Pay Filing Fees?
Depending on the type of invention, applying for a patent can become costly if the product or process is a complicated one. Check out the USPTO’s fee schedule for filing patents to get an idea of how much it would cost to file a patent for your invention. As you can see, the USPTO charges different fees depending on the type of patent you’re applying for and the size of your business. Fortunately, USPTO fees are lower for small businesses and micro-entities.
However, the costs can add up when you factor in fees for conducting a patent search, examination fees, re-filing fees, extension fees, and maintenance fees. There are even additional fees if you’re submitting a technology application, and you submit over 100 pages. There may be more fees on top of that if your application includes a certain amount of drawings. What’s a small business to do if these costs are more than your company can handle?
Assuming your business doesn’t have the money upfront but can pay the fees over time, a good option is the provisional patent process. This process allows you to file a description of your product with the USPTO to obtain an early filing date and file the patent within 12 months so that you have a reasonable amount of time to pay for all the necessary application fees during the year.
How Long Does it Take to Receive a Patent?
Because most patent offices often have a substantial backlog of applications to review, the entire process can take several years for a first-time patent application. Once your application is complete and has been submitted to the patent office, the office may contact you with questions or for more information (this is called an “office action”), to which you must reply within a specified time. There are times where the office may have to contact you several times, which can extend the application process even more.
Keeping in mind how long a patent application process can take, companies should factor this lengthy procedure into their business plans and timeline, especially if receiving a patent is key to the company’s future growth.
Here is Why You Should Patent Your Inventions
Even though applying for a patent may cost you some money and take a while to come to fruition, there are many advantages to having a patent for your invention. Depending on your company’s goals and priorities, the benefits of owning a patent may far outweigh the time and efforts spent to complete a patent application. Let’s look at some of these benefits in closer detail.
Having exclusive rights means your company can profit from the hard work that went into creating your invention. The patent protects your company’s right to exploit the invention however you see fit without having to worry about other companies profiting from your ideas. Having this protection for 20 years is surely advantageous to any company hoping to establish itself in today’s highly competitive market.
Strong Market Position
A patent affords a company strong market position as compared to other companies in the same industry. The 20-year patent disallows others from receiving a commercial profit from your ideas, which dramatically reduces the amount of competition for your product. As a result, your company becomes the go-to brand for your invention and establishes itself as the front-runner in your chosen field.
Higher Returns on Investments
After spending time and resources on developing your invention, you can receive a high return on your investments by gaining the commercial advantages of having a patent. The profits to be gained on an invention with very little competition in the market for 20 years can bolster your company’s resources and allow you to fund future innovations as well.
Opportunity to Sell the Invention
For businesses that don’t want to take the time to commercially exploit the invention, selling the rights to the invention may be another profitable option. You’ve done the work and acquired the patent; now you can profit by selling the fruits of your effort to receive more income to keep your business running. The fact that your company owns the exclusive rights and already has a patent for the product will be a high sell point that can reap substantial rewards.
Positive Image for Enterprise
Being able to prove you invented the product or process means you have a better chance of securing potential investors and other funding resources for your company. Shareholders, investors, and potential business partners will view your patent portfolio as something that increases your value and thus gives you more bargaining power as a company. For example, another business may see your patented invention as relevant to their ventures, and you may enter into a cross-licensing agreement to exchange exclusive rights to your work.
Finally, owning a patent for its invention establishes your company as an innovator in the industry. A company that is the first to invent something useful will be seen as having considerable expertise, specialized knowledge, and impressive technological capabilities. In an economy where brand loyalty, reliability, and reputation are paramount, owning a patent allows your company to build its market value and secure a coveted and respected position in the market.
How Can You Get Started On Applying for a Patent?
If you’re a small business or startup with innovative ideas, it may be time to start thinking about whether a patent is right for you. Depending on your goals and priorities, the benefits that come with a patent can help you greatly in the long run. Applying for a patent can be a lengthy process, but you may decide the benefits substantially outweigh the time and costs involved.
Take some time to research whether a patent is appropriate for your product or process. At Miller IP, we hope to provide you with the tools you need to protect your intellectual property interests. Schedule a strategy session with us today to learn more about applying for a patent for your invention.