Is there actually any “protection” provided by a patent application?

One of the most common questions we are asked by patent filers is – “…is the invention protected when a patent application is filed”?

The short answer is yes – but not in the way you may be thinking because you cannot “enforce” a patent “application”.  Rather, the filing of a patent application “protects” your position to obtain patent rights to the invention and then enforce those rights when the patent is eventually granted.

What is “Protection” Anyway?

The main crux of the “protection” question is understanding what a patent filer means by “protection” – and most often what they mean is – when will they be able to stop a competitor that has “copied” the invention from making or selling a similar invention.

As stated above, you can’t  enforce a patent application until it is granted – and this will typically take anywhere from 6-months to a few years. Depending on the jurisdiction and amendments made (which is why you need to be careful with amendments) you may be able to enforce the patent back to the date of publication of the patent specification that is usually 18-months from the earliest filing date.

So, in effect, the “protection” provided by a patent may start at about 18-months from the earliest filing date, but you can’t initiate any formal infringement actions until the patent becomes granted which is usually well after this date. It is possible to request early publication to bring forward the date of enforcement, although this option must be balanced against keeping the contents of the patent specification confidential for a longer period.

Now, because the patent may eventually be granted and be retrospectively enforceable – it does not make a great deal of sense for a competitor to enter the market with a similar product. Because, by the time they are up and running – your application may be published and therefore in a position to be retrospectively enforced when the patent is granted – therefore protecting your position.

So what “Protection” do you get with a Patent Application?

The main protection you obtain by having a filed patent application – is that your position to obtain patent rights first is protected. If a third party does copy your invention after your patent application is filed – you have the first right to obtain patent rights and when you do obtain patent rights you will be in a position to enforce the patent against infringers.

Because of this “first right” to the invention – potential infringers are dissuaded from entering the market because when your patent does grant – then the infringer may need to stop making or selling the invention and even pay damages to you.

In fact, for this reason – the mere presence of a filed patent application provides enormous deterrent value – and you would be surprised how may potential competitors don’t pursue copying an invention because a patent application is filed.

The value provided to the patent filer is therefore extensive and often the patent filer is unaware of the value provided as there is no-way of knowing how many potential competitors see that you have a patent filed or obtain and review your patent application – and then choose not to pursue your invention, or even a similar invention.

Getting Protection Sooner

If a potential infringer is identified – then it is possible to start positioning the patent application for enforcement such as marking the product with patent numbers, requesting expedited examination, requesting publication, making claim amendments and filing of strategic innovation patents and/or divisional patent applications. Depending on the circumstances, Notification Letters may also be sent to place the potential infringer on Notice.

The Take Home Message

Patent applications do provide “protection” – but not typically in the way you may think. The “protection” is more about reserving your rights, deterring others, and positioning you to firstly obtain enforceable patent rights when they do come to fruition. When the patent is granted – then the patent rights can be enforced.



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