Great Movies Never Die, They Just Get Sequels, Prequels, Reboots and Remasters
Most millennials may remember the day they saw that scene in a movie theatre when the boy-who-lived-who-would-eventually-become-a-pretty-lousy-father-to-his-middle-child was sending off said middle child named after two very brave people and his older brother at that magical platform at a UK train station and thought that that was the end and it was a pretty happy ending to a series that spanned six + one two-part finale movies.
November saw the release of the second part of the Fantastic Beasts trilogy (or should it be called a “pentalogy”?) starring Eddie Redmayne as the central character Newt Scamander who is not actually shown identifying wrackspurts and locating them in their natural habitat.
Like the owners to the rights of famous movie franchises such as Star Wars, the Marvel Cinematic Universe and the aforementioned Harry Potter franchise, patent owners may wonder about how they can maximise and prolong control over their technology long after the patent term is up. Unlike trademarks which allow indefinite renewals and copyrights which last the entire lifetime of the author and then some extra decades (about 50 to 70), patent owners are stuck with a measly 20. While one can’t really prolong the patent term (unless the patent granting authority provides a patent term adjustment), it doesn’t mean that one’s exclusive rights to a particular technology will have to end with that patent. In this article, we will look at some of the ways you can make the most out of your fantastic inventions.
The Art of Making Patent Horcruxes
The first step begins at the application stage, and you need not butter up your Potions professor to obtain this not-so-arcane knowledge. Let’s say that you’re some brilliant wizard who studied an advanced Muggle subject called quantum physics and came up with a time-travelling thingamajig that allows students to take on more magic school subjects than humanly possible. The next logical thing to do would be to engage the services of a patent attorney to prepare and file a patent application at the Ludicrous Patents Office.
Most inventors would only think of filing an application that would cover a particular embodiment of that invention. However, like clever ol’ Tom Riddle, you should consider if it is possible and worthwhile to file and divide an application disclosing several distinct and potentially patentable embodiments to cover more ground. For example, one patent can cover an embodiment which exclaims “Deus Ex Machina” when activated and places the user back in time before a regrettable mistake was made, while a second patent covers another embodiment which, when activated, loads videos after videos of cats getting spooked by cucumbers which distract the user from reality for a moment, only for him/her to realise that hours have passed in that short moment and in so doing, he/she has moved forward to a point in the future, and a third patent can cover an embodiment that transports the user to the middle of a queue to renew one’s passport at the Immigration Department on a Saturday morning where time seems to magically stop and the queue does not seem to progress. In this way, you can have a suite of patents granting you exclusive rights to three separate embodiments of your invention as opposed to one. Thankfully, you need not perform any acts that would damage your soul when dividing your patent application.
The advantages to having a suite of patents instead of just one are many. For example, if a competitor manages to invalidate one patent, you still have others to cover the other embodiments of your invention as opposed to that single patent which, when invalidated, will leave you powerless to stop other players from moving into the market. Additionally, since your suite of patents covers various embodiments, this increases the difficulty for a competitor to design around your patents. Of course, a strategy of filing multiple patent applications can be very costly so it bears consideration whether it’s the most appropriate for your situation.
While the deadline for filing a continuation/divisional application is generally at any time before the patent is issued, in some jurisdictions, this may be much, much earlier. In Malaysia, for example, the deadline to voluntarily divide an application is three months from the date of the first examination report issued for that application.
Additionally, care must be given to ensure that the claimed subject matter of the continuation/divisional applications do not overlap with claimed subject matter of other patents/patent applications. An applicant who unwisely files claims which cover the same scope as the parent or other applications in the same family of applications may receive a howler from the patent office screaming a double-patenting objection.
While filing divisional/continuation applications and obtaining a suite of patents may afford the patent owner a greater coverage than a single patent can, it does not prolong the duration of the exclusive rights which only lasts for 20 years at most. Like the youngest Peverell brother, one day your patents will come to the end of their term and at that time they will have to welcome death like an old friend. Thankfully, there are other steps which you can take to retain exclusive rights over your proprietary technology.
Ever wonder why some companies who own proprietary technologies seem to have monopoly over that particular technology for a period which appears to be longer than possible? While one may be tempted to think that the patent owners have fed their patents with magic from a philosopher’s stone or wrote them in unicorn blood to give them an unnatural lifespan, the truth is that most companies have mastered the art of constantly patenting improvements to their core technology, which grants them exclusive rights over the existing technology and other technologies arising from that core technology.
Since every generation arising from the core technology is covered, it appears as though the patent is continually being evergreened when in actuality the patentee has patents covering generation 1, generation 2, generation 3 and so on. Gillette, for example, has patented the two-blade, three-blade, four-blade and other iterations of their razor cartridges and in so doing ensured their dominance in the shaving products industry from way back then.
Like the shaving products giant, you can always patent improvements to your core invention provided that they meet patentable requirements. In jurisdictions such as the US, an applicant may file what is called a continuation-in-part application wherein that application contains a good amount of subject matter relating to the old application with some subject matter relating to new improvements added into the mix. In other jurisdictions such as Malaysia, however, the applicant will have to file a fresh application even though some of the features of the old invention are very much present in the new invention.
In executing this strategy, the applicant should be aware that filing patent applications for minor or frivolous improvements to a core technology will not result in a grant of patent. Such applications will not get past the patent examiner and filing numerous applications to cover every tiny and insubstantial improvement will result in no patents granted and a very empty Gringotts vault.
For patent owners who wish to apply for patents which cover improvements over their core technology, it would be best to do some homework like conducting a prior art search to ascertain if one’s improvement is substantial enough to be recognised as a step over the existing technology. Making something sharper, faster, smoother, or stronger may not be considered to represent a substantial progress especially if these improvements are mere workshop improvements that combine known technologies which hitherto were not utilised in the core technology. Some questions to ask oneself are such as: “Will someone be able to guess the improvement from the title of the invention?” or “Would it be obvious to mix technology A together with technology B since they should, in theory, give a better output?” If the answer is yes, then it is quite likely that those improvements lack an inventive step.
This lack of an inventive step is a challenge most applicants face since it would mean that the application will not result in a patent. Fortunately, some jurisdictions have 2nd tier patent system called the utility model which do not require such inventive step to be demonstrated. While such utility models may be looked down upon by most for not being a pure-blood patent, the rights granted by these utility models can be as good as a patent in the right circumstances. In Malaysia, for example, the term and scope of a utility model (called Certificate of Utility Innovation locally) is the same as that of a patent, even though the applicant is limited to a single claim. Other jurisdictions may limit the term to 10 years and/or to inventions relating to physical devices only. Having lesser rights is better than none, so, even if the improvement does not qualify for a patent, it’s no shame to settle for a utility model.
Making it Rain Galleons
Readers of the original novels may recall the small beginnings of the mischief-making Weasley twins who invented products that enabled one to feign ailments in order to skip classes. Their products gained popularity and eventually they dropped out of wizarding school to set up a booming business selling magical novelty products.
Unlike the brilliant but non-studious twins, it may be that commercialising your inventions isn’t really your thing. This can be particularly true for research institutions which are more focused on research rather than marketing the fruits of their ground-breaking research. In these instances, it would be unwise assume that one’s genius extends to production and marketing of one’s invention and accept that it may be better to leave the commercialisation aspect to those who know the market.
Licensing agreements can be a win-win solution since they allow you to license the rights to your invention to a third party without having to actually surrender those rights. The licensor can grant the licensee certain rights such as the rights to manufacture and sell a patented product in exchange for royalties or licensing fees. What follows is that the licensee can then make money out of the making and selling of your patented product while you utilize the income that is derived from your licensing fees to fund your future research and development activities so that you can go on to produce more and more fantastic inventions.
Of course, no matter how good a proprietary technology is, the reality is that one day, that technology will become obsolete and replaced with a newer and improved product. At that time, it would be prudent to dispose of that technology instead of holding on to it due to some misplaced sense of nostalgia. Maintenance of patents incur costs and common sense would dictate that if you are bleeding money maintaining an asset that does not work hard to bring you money then that asset can become a liability.
Let’s say that you have a patented process relating to the use of gillyweed for the extraction of oxygen from water that has matured and you are planning to move over to an improved process. However, there is a small but substantial number of licensees using your matured process since it is cost effective and produces a reasonably good yield, albeit a fraction of that which could be obtained through the improved process. Instead of letting the patent lapse, and what a waste it would be, you may want to consider selling your mature patent to a third party. That way, not only do you stop cash from leaking out, you also gain something from the disposal of that old technology.
No Acceptance Letter Required
So, the next time you see a sequel, prequel, reboot, or remaster of a movie and marvel at how some movie studios are able to milk every last drop out of their blockbusters by taking an old favourite, adding some pixie dust and releasing it to hungry consumers like you and I, think about how you can do likewise to make the most out of your inventions. It is not an elusive art that requires enrolment in an enchanted castle magically hidden in the UK or the forbidden study of some dark arts. All it takes is an inventive mind, some patent savvy and a keen business sense. Now, do you have an idea for a fantastic invention?