Most unsuccessful patents fail because not enough time was spent on the key task of searching for prior related patents. Fixed price patenting will limit the time available to conduct a successful search.

It is not possible to create distance from previous patents if you don't know what they are! By using a fixed price patent process you are unlikely to know what the closest prior art is.

When a patent is under examination it is no longer possible to insert new material. The best patents build in material that will help counter and overcome objections raised by the examiner. A fixed price patent will generally not allow for this.

A patent attorney will begin by writing down your description of the invention.

Your patent will be entered into the patent system.

Your patent attorney will respond to obstacles raised by the patent examiner.

We will look at the numerous risk factors in the commercialisation pathway specific to your invention and discuss the risks and the rewards of protecting your new technology with a patent.

We will synchronise your patent application process with your market entry plan – this is important as it will inform you of the cost requirements and the strict timing of patent office payments that will be required for you to get your patent granted in different territories.
payments that will be required for you to get your patent granted throughout different territories in the world.

Often patents are written without enough consideration of the numerous downstream issues that will arise when dealing with patent examiners.

Upon reviewing your patent, the patent examiner will attempt to locate prior art that is close to your invention and attempt to limit your patent claims (restricting how broadly your invention is protected).

Unfortunately when the patent examiner brings up their first round of rejections it is too late to make substantial changes to your patent. This is why it is important to anticipate the patent examiner’s response when changes to your patent can be made.

The time just before lodging a provisional patent application and the 12-month period after lodgement of the provisional application is the flexible period when substantial modifications to a patent application can be made with minimal constraints from patent procedural rules.

The first step in making the most of the flexible period is to anticipate the obstacles that are likely to arise in the patenting process.
Anticipation of downstream patent protection problems involves:

• Identifying multiple pieces of close prior art (ie similar inventive ideas) from world patent and technology databases that the patent examiner is likely to reference.

• Identifying low-cost experiments to categorically demonstrate to the patent examiner that your new invention is different from prior art.

• Comparing and contrasting alternative patent narratives that maximise distance of your invention from prior art.

Inventors are not the best people to identify close prior art, because they have a strong vested interest in the goodness of their invention.

Constructing a prior art landscape that consists of multiple pieces of close prior art that the patent examiner will reference downstream is a key service that can be provided by our patent protection service.

The purpose of experimentation in patent procurement is to dramatize distance from prior art.

The strategic planning of a low-cost experimental campaign to support your patent application should be done by a patent protection consultant.

This service is rarely offered by patent attorneys and should not be carried out by in-house technologists because:

• The objective is to deliver a “fail result” for the prior art that will satisfy a legal expert (the examiner) rather than a technical expert (the inventor)

• Valuable existing in-house data owned by the patent owner is often overlooked because this data has been rejected during the process of refining the invention.

Developing a cost-effective experimental plan to increase the likelihood of broader patent protection is a key service offered by Technology Outcomes.

The statements initially used to define an invention may not be the best statements for securing a grant of patent.

For example, an initial narrative for an invention might be:

“A method of making PVC window frames using a (new) phenolic antioxidant”.

This narrative may be problematic because the class of phenolic antioxidants is well known in PVC manufacture.
However, if lab work shows that use of the new phenolic anti-oxidant makes the PVC window frame more stain-resistant (as well as being a better antioxidant), a better patent narrative might be (depending on marketing strategy):

“Stain resistant PVC window frame comprising phenolic material.”

By changing the patent narrative in this way the patent was granted.

If the patent was written based on the first description given by the inventor a granted patent would have been unlikely.

The patent owner got a monopoly in a new market segment and was able to license this product in many territories.

This is a much better patent narrative because prior art in the field of stain resistant PVC is much more limited than prior art in the field of PVC antioxidants. Therefore, it is much easier to show distance from prior art if the narrative relates stain to resistance rather than standard anti-oxidant function.

It is almost impossible to change patent narrative after the flexible period (see above) has expired – therefore various alternative patent narratives should be considered early in the patent process.

Developing and prioritising a range of patent narratives is a key service that can be provided by a patent consultant.

We will prepare all relevant patent-related information prior to meeting with your patent attorney.
This will reduce your time and costs spent with a patent attorney during this early patent protection phase.

The most cost-effective way of using a patent attorney’s time is to start with an indicative draft of your patent.