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Executive Summaries Oct 24, 2022

What You Need to Know About Patent’s Mechanics

Entrepreneurs will sometimes say that they have "registered their invention" or obtained a patent to "protect a product against copies". However, these two comments indicate a misperception of what a patent is and how it can be used to create value for an innovative company.

In other words, these comments indicate a misunderstanding of the patent's mechanics.

A patent is a legal document issued by the State which grants its holder certain exclusive rights regarding a given "technical territory". Hence, no product is protected as such but rather a combination of technical specifications defining the extent of this "technical territory" with reserved access.

By protecting a combination of technical specifications giving a market value to a product or raising interest and commercial success, the patentee gets a monopoly extending beyond his product: this monopoly will not only allow him to avoid being copied but will limit the marketing of alternative and competing solutions to his product.  In fact, it is the market share that will be protected.

However, this can only be achieved if the "technical territory" granted to the patentee is appropriately defined. This is precisely the role of the "claims" found at the end of a patent: they determine the "technical" extent of the monopoly that will be granted to its holder. First, these claims must relate to a technical object (new material, configuration, etc.) that the patentee has a commercial interest in " preserving ". Then, the scope of these claims must be consistent with the sought commercial objective (blocking a market to competitors, opening new markets by granting licenses, etc.).

The role of a patent agent is to draft claims that will meet these objectives while respecting legal constraints. This is a sensitive balancing act and must be adequately supervised by the future patentee. Different patent agents may describe the same innovation in very different ways and may result in claims (and patents) with very different scopes. However, a patent with an inappropriate scope may be of much less commercial interest to its owner.

Furthermore, before a patent is granted, the claims contained in the application will be examined by an examiner of the patent office to ensure that the subject is not already known or evident in the prior art before the application was filed. The examiner should also ensure that the scope of the claims is appropriate in light of the technical contribution made by the inventor. When drafting patent claims, one must consider not only the commercial goals of the company but also the prior art and must accept that the patent's scope may vary from what is initially sought.

As it appears from this analysis, one does not "register" an invention by obtaining a patent but gets a monopoly on a technical object described in the patent's claims. These claims may be drafted in very different ways, which may significantly impact the scope of the patent's rights and, therefore, its value or relevance.

Finally, the issuance of a patent only grants its holder access to the "technical territory" defined in its claims, which does not guarantee the freedom to develop the innovation. Indeed, a patent is often granted for an innovation that is itself in a "technical territory" already granted to another patentee. Thus the distinction between "patentability" (the possibility of obtaining a patent) and "freedom to operate" (the risk of infringing a patent held by a third party). Here again, how the claims are drafted and interpreted is crucial.

BCF Intellectual Property Master Classes

Our first Master Class in Intellectual Property will be held on October 27, 2022. One of the objectives of this class held by the BCF team is to allow participants to become more familiar with the "mechanics of the patent", to work more effectively with their patent agents when filing applications and to consider the risks of patent infringement by competitors. This insight into the system will allow them to make better-informed strategic decisions.

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