A good patent brings the most commercial benefits, prevents copying, avoids risksand prevents infringement

As global patent applications continue to increase, even in the depth of the Covid-19 pandemic, Espie Angelica A. de Leon chats with lawyers around the region about what makes a patent a good patent.

The World Intellectual Property Indicators 2021 released recently by the World Intellectual Property Organization (WIPO) brings us good news: Intellectual property filings, includingpatents, remained resilient in 2020, despite the global economic slowdown brought about by Covid-19.

The number of patent filings inched higher by 1.6 percent, from 3,226,100 in 2019 to 3,276,700 in 2020. Two-thirds of these global patent filing activities occurred in Asia, with China recording an increase of 96,498 patent applications from 2019. South Korea, Hong Kong and India contributed heavily to the global aggregate.

These numbers reflect 2020’s positive climate for patent regimes despite Covid-19. But what will definitely deliver the bigger, better news are numbers that show patent right holders are actually getting the best value out of their patents.

To achieve this, the patent must be a good one to begin with. So what is a good patent? How do you determine if a patent is a good one ?

“A good patent is one that brings the most commercial benefits, prevents copying, avoids risksand prevents infringement of patent rights when executing,” said Nguyen Tuan Hung, senior associate and patent division manager at ALIAT LEGAL in Hanoi.

“A good patent is a relative expression and can mean a patent that can be enforced and withstand a validity challenge. For that purpose, the prosecution of the application before a national patent office becomes critical,” added Archana Shanker, senior partner and head of patents & designs at Anand and Anand in Noida. According to David Macaskill, a senior associate at James & Wells in Hamilton and Tauranga, the business enterprise must first define its objective. And then, it can start determining whether a patent is helping the organization achieve that objective.

“One of the common reasons for filing patent applications is to prevent competitors from using the key features of your product or service. However, there are other reasons including providing value to potential licensees, to act as leverage in a commercial partnership, to deter competitors, and to define the value in a business as part of a capital raise or trade sale. For all of these reasons, you need to assess how your patents help with achieving your objective,” explained Macaskill.

There may be industries where patents are more valuable or critical.

“As the world is connected through internet and mobile connection, industry standards in the IT, video coding and telecommunication industries are important for things to work. Therefore, standard essential patents in these industries tend to be more valuable as they will be used by all players in the fields, unlike in other industries where valuable inventions may be used by only a limited number of licensees,” said Stephen Yang, managing partner at IP March in Beijing.

“There seems to be a lot of interest in filing computer-implemented inventions because of the intense competition among internet businesses. The thinking is that getting in some patent filing might stave off the competition, giving the company some lead time,” said Kin Wah Chow, a registered foreign lawyer at Suryomurcito & Co., a member of the Rouse Network, in Jakarta.

Although patents filed in all areas of technology are critical, Shanker explained that certain sectors may have gained more importance due to emerging technologies. Among these are the pharmaceutical, telecommunication, automotive and renewal energy/AI sectors.

Will patent mapping and patent landscaping help in determining whether a patent is a good one? These mapping exercises aid in identifying technology trends, competitive analysis and risk assessment.

“Patent mapping is very important to identify good patents. It helps to provide initial orientation for research in areas where there are not so many patents and are still open. It also avoids duplicate research with a previously published invention. Patent mapping visually provides known prior art,” said Nguyen.

“I’ve found patent landscaping a more general approach which looks at information at a high level of generalization. It can be a useful first step if you are trying to define your commercial direction or make macro-level decisions. However, for assessing patentability and defining what to claim in a patent, patent landscaping searching is not a useful tool,” explained Macaskill. “You would need to bury more into the detail to establish what is a good patent.”

He added that another reason why patent landscaping may not be useful is the fact that patent landscaping searches are often completed based on keywords. These are keywords used in the patent specifications or abstracts. In contrast, the strength of a patent is assessed based on the claims.

Nevertheless, Chow underscored the importance of striking a balance so that costs incurred by such mapping exercise will not exceed the costs required by drafting and filing a patent.

A well-written claim also adds value to a patent.

“The claims of a patent define the scope of protection which it provides. Fundamentally, these are the things which you can prevent competitors from doing or which you can offer to partners exclusively. If a patent lists five essential features in a claim, then the alleged infringer needs to use those five essential features to infringe the patent. Using only four of those essential features means there is no infringement. So, if your claim is badly written, it affects the scope of rights you are getting from the patent,” explained Macaskill.

In the first place, what is a well-written claim?

A well-written claim should help achieve the business’s commercial objectives. It should meet the requirements of the legal structure of the claim and include the features necessary to define the invention. A well-written claim should be clear, detailed and strong enough to determine thescope of patent protection.

“A well-written claim gives an ideal coverage which ensures the scope of protection of a patent right is sufficiently wide to be commercially valuable, while maintaining the validity of the patent. It should be an excellent balance between the scope and validity,” said Yang. “Absence of either one will render a patent less valuable.”

“It must take into account the prior art so that it is not anticipated by the prior art but not too narrow as to make it easy for a competitor to design around,” added Chow. “This is a difficult balance to achieve but there should be sufficient detail in the specification to support any amendment to the claim necessary to overcome prior art uncovered by the examiner.”

However, certain things have to be taken into consideration.

Macaskill explained: “For some companies, the strategic consideration is to have patents which are harder to invalidate and challenge. They are therefore happy to have relatively narrow claims which include more features and so better pass the tests of being new and inventive. The downside of this, though, is that the claim may be easier for a competitor to avoid infringing such as by not including one of the additional features included in a relatively narrow claim. So, on the one hand, a narrow claim is better because the patent may better stand up to a challenge from a competitor in court, while a broader patent may deter more competitors or make it harder for them to produce competing products.”

Based on Macaskill’s experience, the more sophisticated approach is to curate the patent portfolio to have a mix of patents. The claim scope of these patents can be tailored to get the best coverage required to achieve the company’s commercial objectives.

“Another issue is that the specification needs to fully support the claim scope. This is a relatively high standard to meet. Care needs to be taken to plan the scope of protection required and ensure that the specification provides sufficient detail to support that scope,” said Macaskill.

He added that countries also have their own requirements.

“Many countries require that the patent disclose the best method of implementing the invention – as claimed – known to the applicant. If you don’t meet this obligation,” he said, “it is irrelevant whether your claim is ‘good’ because you could be prevented from enforcing the patent.”

The lawyers offer these additional tips for individuals/businesses to get the most value from their patents:

• Undertake competitive intelligence and market surveys;
• Consider whether the patent rights can be licensed to non-competing industries or uses;
• Assess whether divisional applications can be filed to protect different aspects of products, or products that were developed after the initial priority date. This enables a patent and portfolio to be kept current with market developments;
• Continue to review patent rights as annuities and renewals are due. “This allows a patentee to determine whether the ongoing costs are justified by the benefits obtained. For instance, product evolution may result in the claims not covering the product, in which case, the patent may not be worth maintaining. However, it should also be assessed whether the patent has value to block competitors from selling products which use the invention claimed, in which case, it would be useful to maintain the patent,” explained Macaskill; and
• Use the Paris Convention or Patent Cooperation Treaty. “As patent filing in more than one country can be costly, it is important to use the Paris Convention or Patent Cooperation Treaty to delay the large spending of filing overseas until better visibility of the market potential of the invention develops. As such, the applicant should proceed to test the market as soon as the first filing is made before the applicant has to commit to overseas filing – 12 months under the Paris Convention or 30/31 months under the Patent Cooperation Treaty,” said Chow.

“It really depends on what the patentee wants to achieve,” Macaskill said. “So there is really no ‘one size fits all’ answer.”

Are recent amendments to IP/patent laws in their jurisdictions making it more convenient for patent right holders to obtain the most value from their patents?

“Generally speaking, the patent practice in China has become more friendly to patent applicants in various industries. For example, the changes of Patent Examination Guidelines allow more AI algorithms or business method-related inventions to be patented, more flexible protection of design patents and even the possibility of more chemical and biotech applications to be granted due to allowance of supplemented experimental data. Therefore, applicants are more likely to obtain patent rights with meaningful scope of protection in these areas,” said Yang.

In India, the law with regard to amendment is extremely restrictive in nature. “The way it has developed leaves very little room for the applicants to modify or add claims, particularly for disclosures relating to the invention disclosed in the specification but not specifically claimed by the originally set of claims as filed. It is for this reason that while filing patent applications in India, the applicant should be mindful and careful of the scope of the claim as well as the embodiments that they wish to pursue in the said application,” Shanker explained.

“The opportunity to amend patent post grant alleviates the problem with mistakes in claims, but this right is restricted to three months following grant,” said Chow of Indonesia’s patent law. “It is hoped that this restriction can be removed provided that third parties are not prejudiced.”

As for Vietnam, Nguyen said the commercialization of patents still exists and depends on many factors. “But there are many patents that are actually never used. Sleeping granted patents need to wake up,” he said.

This can be accomplished by several means, according to Nguyen. These include brokerage activities in the patent market, availability of technology transfer offices to support the commercialization process, estimation of how commercialization influences the patent market, analysis about modes and contract terms of commercialized patents which takes into account the endogeneity problem, negotiations on commercialized patents for profit and others.

What has been discussed here are good patents from the point of view of the patent right owners.

There are also the good patents from the points of view of the public as well as researchers and developers. “For the public, a good patent is one that is easy to read, understand and implement for any person skilled in the art, in the same field and of the manner and process of making and using it, in such full, clear, concise and exact terms as to enable any person skilled in the art to which it pertains,” said Nguyen