Many businesses file patent applications for new technology, but grant rates may be lower than they expect. Technical merit alone does not establish patentability.
Patents are more of a legal standard than the technology itself.
In this article, we will summarize the reasons why patent registration is difficult and the key points that companies often miss.
1. Public disclosure and the risk of losing novelty
For example, after the company develops the technology, the following activities may be carried out first.
- If you sold the product first.
- If you have deployed the technical introduction materials
- If you have posted the technology on SNS or homepage
- Disclosure at an exhibition
If such an action has been made, the patent may determine that the technology has already been disclosed to the public. In this case, even good technology can make patent registration difficult.
This is related to one of the core requirements of patent. Novelty means “not prior art” and, in principle, a technology that has been disclosed once is difficult to be protected by patent.
However, if you meet certain requirements in your country, you can maintain the possibility of registration through grace period (except for novelty loss). For example, if the applicant has disclosed the technology to the public and has filed the grace period claim within 12 months of the disclosure, the novelty may be recognized.
However, to be eligible for the grace period, you must prepare the evidence and follow the procedure correctly, and not all forms of disclosure are accepted. In many countries, the grace period is limited or not recognized at all.
Therefore, in practice, it is the safest strategy to proceed with an application before disclosure, rather than relying on a response after publication.
2. "We've developed it ourselves" and "Inventive Step" are separate issues.
Since the development of the technology, companies often review patent applications by determining that they are different from existing technologies. In fact, if you have a certain improvement or discrimination point, it’s a natural flow to expect a patent to be possible.
A difference from prior art is not enough for patentability. Inventive step asks whether the invention would have been obvious to a person skilled in the relevant field in light of the prior art.
Based on the technical level of the field, the examiner determines whether the existing technologies are easily concocted or modified. In this process, when a simple material change, some modification of the structure, or a combination of existing functions, the inventive step is often rejected as insufficient.
After all, what matters is not the effort in the development process itself, but whether we can logically explain how technological differentiation and dominance compare to existing technologies.
Therefore, it is important to design strategically, rather than simply listing improvements when preparing patent applications, with a clear point of differentiation over prior art and its effects.
3. Good technology and a patentable invention can differ
The company's research and development (R&D) is centered on product performance and technology implementation, but patent is based on legal requirements such as industrial applicability, novelty, and inventive steps.
So even if a technically significant improvement has been made, it is difficult to be recognized as a patent if it is merely a variation or combination of existing technologies.
Such ‘good technology’ and ‘registerable patent’ do not necessarily coincide, and failure to understand this difference increases the likelihood of failure to secure rights.
A patent application must define the protection sought, not merely describe the technology.
One of the things that companies miss the most when preparing their patent is the cleanup of their technology from a “rights perspective.” The development process will focus on implementing technology and improving performance, but patenting is more important to how far that technology should be protected.
For example, if a key differentiator or competitive advantage of a technology is not clearly defined, the scope of the rights may be unnecessarily narrowed during the application process, or the patent may be difficult to use even after registration.
After all, patent is not just a technical explanation, it’s a matter of designing the right to protect the business.
How to prepare a patent?
First, it is necessary to clearly define the key differentiators when compared to existing technologies. We also need to design the scope of our rights so that competitors can't easily bypass where protection is needed in the real business.
In addition, it is preferable to pre-apply before the technology is released to the public.
Difficulties in obtaining a patent can arise from poorly timed disclosure or inadequate claim drafting, even where the underlying technology is strong.
Therefore, the most effective method is to prepare the patent strategy together in the early stages of technology development. Talk to experts to make innovative technology a unique weapon in the market.
This article reflects the information available when it was published. Contact us to discuss your circumstances.