In a previous column, I discussed how patents can be monetized either by wholly assigning the rights in the patent or, alternatively, by licensing a portion of the rights. There is, of course, a more obvious way of monetizing intellectual property and that is by using an invention. As I have written before, a patent bestows on the patentee the right to exclude others from making, using and selling the patented invention. A patent in and of itself does not, however, grant a patentee the right to use his or her own invention.
For many companies, patents protect the crucial innovations developed through costly research and subsequently allow the company a limited-time monopoly to recover those costs (and more) by selling the invention in the marketplace. Any other party who attempts to make, use or sell the invention can be sued for patent infringement — one need look no further than the $1 billion dollars in damages that a jury awarded to Apple in its suit against Samsung last year — to appreciate the sums of money that can be involved.
If an inventor intends to use their intellectual property, it’s important to understand how a patent is crafted to protect the invention. Input from the inventor is critical when the patent application is being drafted. Let me paint a scenario: a chemist discovers a new surfactant that has improved properties over those already known and plans to market the new compound. The new surfactant has the following chemical formula, CH3-(CH2)16-CO2Na. Obviously, it’s critical that the patent protect this commercial embodiment.However, in this example, a patent that only protects the commercial embodiment doesn’t offer much protection at all. A competitor could simply make a minor change to the chemical structure without threat of infringement. For example, a surfactant having the chemical structure CH3-(CH2)17-CO2Na would likely not infringe a patent that only protected the commercial embodiment. While protecting the commercial embodiment is important, a patent should go further in an attempt to protect future alternatives, as well as protecting a suitable scope such that a competitor cannot easily design around the protected invention. If a patent protects a successful invention, there is no doubt that competitors will attempt to produce alternatives that fall outside of the protection offered by the patent. During the drafting process, describing and protecting alternatives is where the inventor’s knowledge of the invention is critical — what is the length of the alkylene chain such that the surfactant still retains activity? Will other hydrophilic moieties be as effective as the carboxyl group? Will the choice of the cation influence the properties of the surfactant? Based on the knowledge of the inventor, the patent may eventually protect surfactants having the formula CH3-(CH2)m-X-Y+, where m is between 10-20, X is CO2 or SO3 and Y is Na or K. The goal when drafting a patent application is to find a balance between protection that is broad enough (to prevent competitors from easily designing around the invention), while ensuring it remains an accurate representation of what the inventor has actually invented. Patents can be held invalid for being too broad.
Patents are obviously valuable business assets but their value, like most things in life, depends heavily on the skill with which they are drafted. The best strategy when drafting a patent is for the inventor(s) to be heavily involved to ensure that the patent protects the true value of the invention.
If you are interested in learning more about intellectual property, specifically with respect to chemical patents, consider joining me and others June 4 at the Intellectual Property Symposium, which is part of the 97th Canadian Chemistry Conference and Exhibition in Vancouver. I hope to see you there!
Mike Fenwick is a patent lawyer with Bereskin and Parr LLP in Toronto and holds a master’s degree in organic chemistry.