Is my patent (application) any good?

Ever wondered how you can get an idea of whether you (will) have a solid patent or not? There are many different factors that are involved in determining if a patent application is any good (too many to list here), but there are a few general things that you can look out for that are applicable to any Life Sciences patent application. Here I will provide you with a quick list that I believe are signs your patent application could be improved (and why):

1. You have very little claims

Fewer claims means fewer fall-back positions in case the pending claim set is rejected by the Examiner. Therefore, it is a good idea to maximize your amount of claims (within reason) to ensure you always have another option for amendment.

In Europe, and in many other jurisdictions, you have a maximum amount of claims that are "free" before you have to pay a fee for each "extra" claim. In India and China it is more than 10 claims, in Europe it is more than 15, in the US, Canada and Australia more than 20, and in the UK more than 25, to name a few. Other jurisdictions have no limit on the amount of claims, such as Mexico and Qatar, and during the PCT phase there is also no limit on the amount of claims. It is therefore unwise to not at least have 10 claims, which is the minimum amount of claims that will be free.

It is, however, wise to check with a patent attorney when and where excess claims fees would be due and how much it would cost per "extra" claim to weigh the costs and benefits of having a certain number of claims. In a lot of jurisdictions the extra claims fees may be low-cost enough to warrant paying a bit more for some extra scope of protection (e.g. in China an extra claim costs 20 euros and in India it is 18 euros).

Additionally, it is very important to have basis for all claims (and some additional possible claims) in the text of your application so that you can add or delete claims as needed.

2. You have no (or little) experimental data

This is especially relevant in the field of Life Sciences. In theory, a patent application could be granted without any experimental data, however in practice this is not recommended. Having little to no data in your application will most often lead to an objection that the invention cannot be carried out across the entire scope of the claims (sufficiency of disclosure). This will either lead to your application being limited to only those embodiments for which data has been presented or, if there is no data, your application may be rejected in its entirety.

In Europe, and some other jurisdictions, some of this may resolved by post-filed evidence (i.e. submitting experimental data after the filing date), but this data can only support what was already originally disclosed in the application, thus it cannot be used to disclose a newly discovered effect of the invention.

3. Your application is less than 30 pages

In the patent world "less is more" is not always applicable. When it comes to a Life Sciences patent application it is very rare to find an application that has a "low" number of pages. Because, although the claims need to be clear and concise, in our Description (the rest of the text) we need to elaborate on the claims to provide support for why these claims should be granted. This is done, firstly, through the Example section (experimental data). The Example section is one of the most important parts of the patent application to provide proof to a patent office that the invention as claimed works and has advantages over the existing technology. Consequently, the Example section is usually quite extensive and so takes up quite a few pages. Secondly, in the general text we want to describe the invention in enough detail and provide enough evidence and description of its advantages that we can defend our invention in the prosecution phase and also after grant. Thirdly, there needs to be basis in the application for the pending claims, potential extra claims, as well as certain claims in different claim formats that may be required for different jurisdictions (e.g. medical use). This ensures that certain claims can be added to the claim set during prosecution if needed.

4. Everything is immediately novel and inventive

Once you are satisfied with the draft of your application the next step is obviously to file it. Once it is filed, after a few months you will receive a so-called Search Report (i.e. the document that the patent office sends you about the search they did to see you if your invention is patentable according to them). If your Search Report states all your claims are novel and inventive you would think that this would be a good thing. However, in practice it probably means that the scope of your patent will be rather limited and in case you need to narrow it further for other reasons (like clarity), that would leave you with a very narrow scope of protection.

Instead, you would hope to have some objections against the novelty and/or inventive step, because this means you have started nice and broad with your scope and you still have wiggle room to narrow it down a bit. Because you have to remember: you can always narrow your scope, but you can never broaden it beyond what is disclosed in your application as filed!

5. You didn't work with, or get it checked by, a patent attorney

You may think that I am just saying this simply because I am a patent attorney (a.k.a. tooting my own horn), but as somebody who is deeply aware of the complexities of patent law I cannot encourage people to try to write a patent themselves without any help from a patent attorney. Although many people may assume that in order to write a patent application you just need to have a profound knowledge of the technology and if you do the application will write itself, but this could not be further from the actual practice of writing a patent application. Of course, a certain level of understanding of the technology is required, which is why all patent attorneys have a technical/scientific study background, but writing a patent application boils down to a game of language. A skilled patent attorney has mastered the art of writing down the invention in such a way that it is clear enough to be able to reproduce (in theory) but vague enough to cover more than just the one product/process you want to protect.

You may not believe this, but patents have fallen based on the placement or lack of a comma in a certain claim (see EPO decision T 1473/19 for an example). In other cases a certain word choice can lead to a patent being severely restricted or rejected. One of the main pitfalls being "absolute terms", i.e. words like "necessary", "critical", "required", "essential", etc., which can signal that the features preceding or following these words have to be a feature in the claims. Additionally, using words like "consisting", "is" or "containing", can limit your claim to only the features listed, even when that is not your intention. Picking the right words, the right phrases and using the right punctuation is a crucial (another absolute term) part of drafting a patent application

Competent patent attorneys, like myself (naturally), know how to play the language game and will draft your patent application with the aim of covering the technology with a nice bubble around it encased in an ironclad wall. An ideal patent (application) will after all be written so rock-solidly that it will easily avert any attacks from a competitor, while actually protecting what you as a client would need to leverage it in the market.

So, if you have an invention that you want protected with a patent (application) that will in fact be useful to you later on, do not hesitate to reach out. I am more than happy to assist in any way I can to get you the patent portfolio that will actually be an asset to your company. Feel free to send me a message on LinkedIn or email me at [email protected]