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Embracing uncertainty: The only rational response to competitors ungranted patents?

By Caroline Day, Partner

Working with start-ups, every so often I’m asked a question which is almost impossible to answer. The person asking it is usually anxious and perplexed, and often short of funds.  

The question goes: is this third party’s patent application relevant to my business? 

The first thing to highlight is that a patent application is not a patent. With a bit of spare time and a little cash, you can file a patent application and get it published covering anything you please. It is likely to be some time – perhaps around 18 months to 5 years from publication – before a patent is granted, if one is granted at all. The scope of the granted claims may be different from the scope of the claims in the application as published. Alternatively, the applicant may lose interest or may have their patent application refused. So we arrive at a first level of uncertainty: will a patent be granted and if so what scope will it have? 

Next, we have to consider territory. In some cases, it may be a Patent Cooperation Treaty (PCT) application. Such an application cannot, by itself, result in a granted patent. Instead, it is best to view PCT applications as placeholders, reserving the right of the applicant to file in national or regional jurisdictions (for example, a US or European patent application) for up to 30 or 31 months, depending on the jurisdiction. So taking this circumstance, we have another level of uncertainty: we do not even know where a patent will be sought, and therefore cannot say whether this overlaps territorially with the interests of the business concerned 

Finally, we have the business itself. Start-ups are agile, famous for pivoting. A product may not have been finalised, and indeed product launch may be months or even years away. In such circumstances, it is impossible to say whether the patent could be relevant, and that would be true even if the scope of the patent and the territories it covers are known.  

Amid all this uncertainty, what’s the best way forward?  

Well, the lawyer in me wants to suggest reviewing the application, mapping possible routes to grant and considering how these may or may not impact a nascent business. Depending on the complexity of the patent application, this process can be time consuming and expensive. In addition, in reality, it can be hard to foresee every route forward for an application and such an investigation may prove pointless if the patent application does not in fact proceed to a granted patent in a territory in which the start-up intends to trade. 

The other option is scary: wait and watch. However, in some cases, this may be the only practical way forward. We can watch to see what territories the application proceeds in and how its scope changes as it heads towards grant. The scope of the claims of the patent application may even inform the development of a product. And if it begins to look like grant of a patent with a pertinent scope is likely, we can consider mechanisms for challenging patents and patent applications, or indeed if it might be possible to take a licence to the patent or application. 

Ultimately, patent applications are just one of the risks start-ups should take into account when assessing the viability of their business. Don’t be afraid to reach out though – we’ll work with you to consider what action is most suited to your circumstances.  

This is for general information only and does not constitute legal advice. Should you require advice on this or any other topic then please contact or your usual HLK advisor.

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