IP and Business: Managing Patent Costs
| Author | Christopher M. Kalanje and Guriqbal Singh Jaiya, |
| Position | WIPO Small and Medium Sized Enterprises Division |
An important first step is to put in place a clear and focused IP strategy that serves the overall strategic objectives of the business. Patent applications should not be filed for every patentable invention. Such a strategy could send patenting costs spiraling out of control. Businesses should only obtain and maintain patent protection on inventions that will bring sufficient commercial or strategic benefits. Trade secrets and defensive offer alternatives to patenting that have a much lower cost than patenting publication (see WIPO Magazine articles Trade Secrets Are Gold Nuggets: Protect Them, Issue 4/2002, and Launching a New Product: Freedom To Operate, Issue 5/2005).
If an enterprise determines that patenting is the best option in terms of their strategic objectives, then the direct costs may be considered from a number of perspectives.
It cannot be assumed that just because a product is not already on the market, it will meet the patentability criteria of novelty and non-obviousness. A professional prior art search is an essential part of the process to determine patentability. The search moreover provides the applicant with valuable information that may result in substantial savings in the application process and beyond, by, for example:
* helping to anticipate possible objections at the patent examination stage;
* revealing any potential infringement on other people’s patents;
* providing information on other patents in that field, (i.e. the competition), on how useful the granted patent would be from a commercial angle, and whether it would be necessary to ‘license in’ patents owned by others to practice the invention;
* helping the applicant to decide whether to modify the claims to avoid infringement.
Free patent information database services on the Internet can usually be accessed through national or regional patent offices. These offices may also provide information about subsidies or grant schemes and services that might be available to enterprises. These free services will keep preliminary search costs down, but will probably not suffice. Applicants will eventually have to use a commercial, value-added patent information service provider.
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