Ideally, your patent strategy should be designed to cover all aspects from initial protection to the stages beyond, such as commercialisation. The most complete patent strategies take all the relevant factors into account to ensure complete protection and to maximise the chances of a successful product or process being commercialised by the opposition.
What is the best patent strategy?
The filing of a provisional patent application with IP Australia is usually the first action taken, as it is provides you with a priority date and 12 months’ protection from that date to further develop your invention or refine your patent specification. This period may also be utilised to consider the commercial prospects of your invention and whether it is worthwhile to pursue patent protection beyond this stage. Provisional patent applications can now also be filed online.
Your patent strategy should take into account a number of factors when drafting provisional patent applications:
- Are the claims broad enough to cover ways in which copiers might try to replicate your idea? — the claims in your provisional patent application should generally be drafted in broad terms to afford you the widest protection against imitation.
- Will your provisional patent application come out of examination, particularly in the United States and Europe, in a state in which it can still be used to block copiers? — during examination, patent claims normally have to be amended and refined to distinguish them from what has been done by others previously, known as the "prior art". Some amendments may be fairly trivial while others may result in a completely ineffective patent.
Note, however, that the kinds of changes you are permitted to make to amended specifications will depend very much on the level of detail of the information that has been included in your provisional patent application.
The filing of a complete application within 12 months of filing a provisional application will enable you to further enhance your product’s protection. However filing a PCT application within 12 months is the usual interim step, which this enables national phase applications to be lodged much later in the countries in which you seek protection — and a significant portion of the cost to therefore be deferred. The chosen countries will depend on where you think it will be most profitable to bring your invention into the market.
Help with your patent strategy
As is apparent, it is crucial that time is spent identifying the angles from which competitors may approach and safeguarding the idea as comprehensively as possible from the beginning. This is why it is very important to have your provisional patent application professionally prepared by a patent attorney. A patent attorney is uniquely qualified to represent a patent applicant or patent holder, and he or she is best able to recognise the unique aspects of your product or process which, when included in the patent specification, will maximize the chance of the patent application being eventually granted.
Commercialisation component of your patent strategy
Your commercialisation strategy should be tailored specifically to address the needs of your business and maximise the profits you can extract from your product(s) and/or process(es). Ideally this commercialisation strategy is a superset your patent and, more generally, your IP strategy. Retaining professional services for the development of a comprehensive commercialisation plan allows you to take advantage of the market experience of a commercialisation expert, gaining valuable insights which might otherwise result in ‘dead-end directions’ and loss of time and money.
Planning for my commercialisation and patent strategy
Getting your product off the ground should take into consideration the:
- Raising of capital through a government grant or financial investment;
- Negotiation of a licence agreement; or
- Formation of a strategic partnership.
Furthermore, the success of your business may take into account your:
- Identification and understanding of the inner workings of your market;
- Creation of a corporate identity that will give the appropriate impression to your clients and customers; and
- Selection of a sales strategy that will convince buyers to do business with you on the right terms, rather than with others.
The experience of a commercialisation expert will also prevent you from making rookie errors that could damage your competitive edge.
Important Disclaimer: The information on this website is not legal or professional advice. The information may:
- not be correct;
- only relate to the law or practice in a given country; and/or
- be outdated.
For more information, please contact the Site Administrator: Baxter IP.