Does Your Product Infringe Your Own Patent Claims?

by: Elaine Johnson

Your Patent Agent has diligently drafted your patent application. They have liaised with your inventors to ensure that the application describes and claims various alternative embodiments of your invention.  They’ve battled with Patent Examiners in numerous countries to obtain the broadest possibly protection for your invention. Finally the application has become a granted patent in several jurisdictions! Everyone is now confident that the issued patent claims encompass your product or process … but do they really?

Obtaining a Patent Takes Time

Patent applications are, by necessity, typically drafted early in the product development cycle. It takes many years to obtain a granted patent and similarly many years to develop a product. Both the Patent Agent and the development team will have to overcome many obstacles during this time.

Along the way, your Patent Agent will likely have to limit the scope of protection initially claimed in the application in light of other disclosures found by Patent Examiners. Your development team may change your intended product or process depending on manufacturing constraints, cost of components or reagents, or scale-up complexities (this applies particularly to chemical companies since a laboratory process to produce grams of a chemical rarely scales up to produce kilograms).

Keep Your Patent Agent Informed

In an ideal situation your Agent is informed of changes that are made to your product or process during development. The Agent then ensures the patent either issues with claims that protect the changed embodiment or, if the patent has already been granted, claims it in a pending application (this underscores the importance of continuation practice in the US). Unfortunately, communication between different departments doesn’t alway happen so companies may obtain and maintain patents that no longer actually claim their key product or process!

So, here’s some good advice to patent owners.  Periodically review your patents to ensure that your products and processes do indeed ‘infringe’ your patent claims then speak to your patent advisor if your claims no longer cover your commercial embodiment. You could save, or generate, a considerably amount of money by adjusting your patent strategy in this way.

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