Does Your Patent Portfolio Need a Health Check?

Like all other assets, intellectual assets require proper care and maintenance.  In the case of patents, there is more to this than just paying periodic renewal fees.  As your business and associated patent portfolio evolve, you should regularly turn your attention to the continuing health of that portfolio. 

Aside from managing the content of your patent portfolio to ensure that it has continuing relevance to your commercial strategy, you must also review your important patent assets to ensure that they remain valid and useful.

One often-neglected area of patent management is post-grant amendment.  Any organisation that is building a substantial portfolio within a particular area of technology will inevitably expand its awareness of key publications and other prior art in that area.  This may occur as a result of ongoing in-house research and development activities, patent searching and/or the examination of relevant patent applications in patent offices in various countries.  Therefore, it is entirely probable that from time to time you may become aware of prior art that would invalidate one or more claims of your granted patents. When this occurs, you need to think carefully about what action, if any, you need to take.

If a correctable deficiency is identified at any time, it is important to bear in mind that it may be too late to take appropriate corrective action once a potential infringement of the patent is identified.

POST-GRANT AMENDMENT OF AUSTRALIAN PATENTS

In our recent post, A Tale of Four Amendment Requests, we wrote about the provisions for amendments of Australian patents, and discussed four recent decisions exemplifying the various benefits and pitfalls of different approaches.  To recap briefly, an amendment may be made to a granted patent for any reason, provided that it does not:

1. broaden the scope of the patent;
2. add and claim new subject matter; or
3. introduce certain other defects into the description or claims.

Depending on the precise circumstances, amendment may be requested before the Patent Office or by application to a court. 

The Patent Office procedure is relatively low cost and, if the amendment is allowable, the Commissioner of Patents has no discretion and must allow the request. However, an amendment allowed by the Commissioner is open to opposition by third parties.

The alternative court procedure must be followed if relevant proceedings, such as infringement or invalidity actions, have already commenced.  However, the court has discretion to refuse an amendment that is otherwise allowable.  Exercise of this discretion is guided by equitable considerations, primarily relating to the conduct of the patentee.

STRATEGIC CONSIDERATIONS

Recent cases demonstrate that it will generally be preferable to request amendment before the Patent Office at the earliest opportunity and before any dispute arises with another party. Our experience is that amendments are rarely opposed unless the opposing party has some existing apprehension of an infringement action and is therefore monitoring the patent.

If an approved amendment request is opposed by an infringer, the patentee can seize back the initiative by filing suit, thereby removing the matter from the Patent Office. An application may then be filed with the court for an order to make the same amendment already approved by the Patent Office.

In any circumstances in which it becomes necessary or desirable to apply to the court for amendment, it is essential that the patentee provides a full and frank disclosure of all relevant circumstances, even if this involves a waiver of privilege in advice regarding the need for amendment.

Finally, the court may exercise its discretion to refuse an amendment application if there has been unreasonable delay. For example, if you have known for years that your patent claims are invalid, but have nonetheless enjoyed the benefits of allowing the unamended patent to remain on the register, it is entirely possible that the court will refuse a request to amend after commencing infringement proceedings.

(A version of this article was originally published on 25 August 2010 in the International Reports section on the IAM Magazine website.)

---

Before You Go…

Thank you for reading this article to the end – I hope you enjoyed it, and found it useful.  Almost every article I post here takes a few hours of my time to research and write, and I have never felt the need to ask for anything in return.

But now – for the first, and perhaps only, time – I am asking for a favour.  If you are a patent attorney, examiner, or other professional who is experienced in reading and interpreting patent claims, I could really use your help with my PhD research.  My project involves applying artificial intelligence to analyse patent claim scope systematically, with the goal of better understanding how different legal and regulatory choices influence the boundaries of patent protection.  But I need data to train my models, and that is where you can potentially assist me.  If every qualified person who reads this request could spare just a couple of hours over the next few weeks, I could gather all the data I need.

The task itself is straightforward and web-based – I am asking participants to compare pairs of patent claims and evaluate their relative scope, using an online application that I have designed and implemented over the past few months.  No special knowledge is required beyond the ability to read and understand patent claims in technical fields with which you are familiar.  You might even find it to be fun!

There is more information on the project website, at claimscopeproject.net.  In particular, you can read:

1. a detailed description of the study, its goals and benefits; and
2. instructions for the use of the online claim comparison application.

Thank you for considering this request!

Mark Summerfield

Tags: Amendments, Australia, Patent litigation, Strategy