Patent Pending

Does IP Lag behind innovation?

Against a backdrop of every major tech player stockpiling intellectual property, D/SRUPTION asked Gwilym Roberts, partner at Kilburn & Strode – How the PR for patents got so bad and where improvements might be found?

There has always been a need to balance the role of IP between beneficially stimulating innovation and the risk of the system being abused. As a result, the current bad press comes in two forms. Patent holders argue that the system is so slow and costly, a product can be on sale and copied before a patent is ever granted. Conversely, potential copiers argue that patents are handed out far too easily and are too easy to assert.

To appease both sides would require patents to only ever be granted to genuine inventions rather than variations on a theme. This would prevent crazy decisions and even crazier damage awards from US courts, where patent cases are heard before a jury. But who should decide what is ‘true innovation’?

Another possible solution should be to address the time it takes to secure a patent. Surprisingly, the most vociferous complaints about the three to six year process come not from the patentees but their competitors. This is because while a patent is pending, there is ample opportunity to attack competing products by varying the scope of the patent. This was demonstrated by the notorious ‘submarine patents’ in the US, where pending applications were kept unpublished and rewritten to track, and eventually sue, competitors’ developments. On the other hand, sometimes a patentee will have a product that’s going to market quickly and is likely to be copied aggressively, so rather than drawing out the process, they will want a speedy resolution to the patent process.

So what system would provide a sensible degree of protection for the patentee while also letting third parties know where they stand on the matter of producing similar products without the threat of being sued for patent infringement?

Any solution will have to meet some key requirements:

  • The time that any patent remain pending needs to be reduced
  • Patentees need enough time to get their product to market in order to pay for their patent protection
  • Patentees should have the option to fast-track patents when time- to-market is crucial. This is already possible in the UK and Europe but is both trickier and costlier in the US
  • Third parties should also be able to request acceleration of slow-moving patent applications in order to clarify their own position. The European Patent Office is looking at this option
  • Subject to patents only being granted to legally de ned ‘true innovations’, interested parties should be able to specify a rigid timeframe for gaining a patent

This last proposal isn’t currently reflected in legislation anywhere in the world but its benefits to patentees can be seen immediately – that with a well-de ned product development timescale, time to product launch can be predicted, allowing a timescale for granting a patent to be set in stone. Probably the opportunity to define the timescale should only be afforded to the patentee as clever third parties could play havoc otherwise, but this is a debate yet to be had. However, matching the delivery from national Patent Offices to the requirements of businesses seems to be central to ensuring that the process continues to support innovation culture.

There are strong practical issues surrounding this level of flexibility but what a triumph it would be if we aligned the granting system with the innovations that necessitate its existence. Patent Offices everywhere are getting better at listening, so this might be something they’d be interested to hear more about. Until then, however, whichever side of the system you sit on, you’d better get used to seeing that ‘patent pending’ sign.

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