Defensive Patent Filings

As of March 2013, both in the United States and the EU, the first inventors to make their public disclosure to the patent office will win priority to the patent rights associated therewith.  This “first-to-file” patent system is designed to encourage companies in opening up their technology before a competitor does the same… the first company to the patent office with their technology get’s the upper-hand. Unfortunately, the system also awards those who can more readily allocate the funds to engage in the patent process.

In view of the new laws, the most secure approach, from the legal perspective, is to start engaging in the patent process before a competitor forces you into the process at much more substantial cost.  Take for example the following scenario:  A competitor files for patent on a technology. However, you’ve developed and have been using this technology long before the competitor’s patent filing… but how will the Patent Examiner ever discover your technology?

In fact, there is little to no chance that the Patent Examiner will be able to site your technology in rejecting your competitor’s patent filing if your technology hasn’t received much PR. In turn, the Examiner may grant your competitor a patent on the same technology you’ve been using for a while… and, all of a sudden, you’ve been dragged into a legal situation.

At this point, you have a few options – but none of them come cheap. For example, you can oppose the grant of the competitor’s patent or you can assert prior usage rights. Take the following pointer to avoid this scenario:

From a defensive standpoint, it’s good to file for patents for at least the reason of putting the patent office on notice of your technology. First, this serves to prioritize your spot in line for the patent rights. Second, since the patent office will now have your technology in their databases, you won’t have to rely as much on policing your own intellectual property by constantly monitoring and opposing competitor patent filings. In turn, this will save you substantial costs down the road.. and.. you may even add a few patents to your own portfolio.


If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.