About the author:
Yuhei Okakita has been working as a patent examiner in the field of software at the Japanese patent office since 2009. During his career, he may or may not have mistakenly granted a few undeserved patents …

Usually, patent examiners mainly search patent documents (domestic and foreign) to check patentability. If enough evidence is found to make the final decision, the investigation ends there. If it is not the case, examiners may conduct additional searches using a commercial database of academic papers or run Google searches (articles on websites are often cited to deny patentability). Because it is difficult to know exactly when the article was published on the web, in practice, the date is assumed to be the one reported in the article itself.

However, the amount of time that an examiner can spend on one application is limited. What happens if the examiner fails to find appropriate prior art and grants a patent to an invention that should not be patented?

In such cases, patent rights can be revoked through specific procedures. For example, the European Patent Office (EPO) has a procedure called “opposition”. Anybody can challenge the decision within nine months after the EPO has decided to grant it.

Here, I will make one assumption: suppose you came up with the same invention before the patent application was filed, published it on your website (accessible by anyone) and implemented it. Nevertheless, the examiner failed to check your website and granted a patent. Now, there is a patent but at the same time you have the evidence to invalidate the patent. In that case, you have some options.

One is to ignore the patent until the patentee contacts you (remember you implement the invention and it means you infringe the patent).

Another option is to file opposition to nullify the patent. However, opposition procedure is expensive and time-consuming. You need to read a lot of materials, draft papers for the EPO, and go through an oral hearing. You should consider the cost-effectiveness.

The final option is to request a license from the patentee. You would get a license for free because you have strong evidence which enables you to invalidate the patent. Merits for the patentee is clear – s/he can prevent the patent from being invalidated. What are the benefits for you? You can take advantage of the unique duopolistic situation in which you and the patent holder share exclusive rights over the invention as long as the patent remains alive.

In general, if you come up with a technical idea, you have the choice of

keeping it secret (like the recipe of Coca-Cola)
filing an application to obtain a patent, and
making it public (the so-called defensive publication)

Of course, each option has pros and cons. When you protect your idea as a trade secret, you need to be careful not to leak it to others, but you do not have to register it to IP offices. But what if a third party gets a patent on the idea? Even in such a case, your freedom to operate is guaranteed thanks to “prior use right”*. However, you must prove that you actually invented the idea before the third party filed a patent application.

Protecting your idea as a patent is another option. True, a patent is a strong IP right, but it takes money (usually more than €10,000 per application) and time (usually over two years) to obtain a patent, so you need to carefully consider the cost-effectiveness.

Should you decide to disclose it, there are several variations of the strategy, such as where to put (i.e. on famous academic journals expecting examiners would find it or on a website with little access) according to your strategy. This is an interesting part of IP strategy planning. Here at Bernstein, we're working on a new publishing media combining public blockchain technology and a decentralized storage system, IPFS. The goal is to make it more convenient, affordable and reliable to create strong prior art. You can read more about our project at the following link.

——

*”A prior user right is the right of a third party to continue the use of an invention where that use began before a patent application was filed for the same invention.” (source: USPTO website)