Five critical patent mistakes you cannot fix after filing

A patent application can look polished and protect very little. The difference largely comes down to an application that complies with technical requirements versus an application that is structured to meet strategic objectives.

Patent value can turn on a few key decisions: what to claim, what to hold back, and where to retreat when the broadest claim fails, for example. And these decisions are largely locked the day you file. You can make minor amendments within what you have on file, but it impossible to recast your application more strategically after filing. Your application is datestamped and at that point you cannot add 'new matter'.

Here we review some of recurring missteps you want to avoid.

1. Patenting the parts nobody wants to copy

Selecting what to patent as part of any new product or project is perhaps the foremost decision. Often, the obvious choice can be a poor choice. Applicants very often reach for the great technical breakthrough, but patenting that aspect may not be of great value if competitors have no inclination or need to copy that feature.

That mistake can produce a valid patent over a feature no competitor needs. They copy the product, leave that feature out, and owe you nothing.

The features worth claiming pass four tests:

• Demand. Customers choose the product because of it.
• Patentability. It is new, and not obvious over what has already been published.
• Leverage. A competitor would need that feature to remain competitive, and has no cheap design around.
• Visibility. You can tell from the outside if a competitor uses it.

A feature that fails the last test may be better kept as a trade secret, which is where the next mistake begins.

Remedy. Before drafting anything, list the candidate features and test each one. Ask what a fast follower would copy first: the minimum viable copy. Consider pointing the claims there instead.

2. Publishing the secret sauce

Many applicants assume that a stronger patent is one with more detail and information. Nothing left out! Not so. Everything in a patent application becomes public, whether you claim it or not.

Most applications are published about 18 months after the first filing. Your patent then gives you no rights over anything described but not claimed, and that material becomes citable against your own later patent filings. Also, you might be giving away critical intelligence that your competitors may never have arrived at themselves. As an example, describing process settings, or production methods that cannot be reversed engineered from the finished product may not be necessary in your patent application, and offer no better protection. You may think of this detail as incidental but it can actually be critical know-how to others.

Remedy. Before drafting, sort the material into two piles: what the claimed invention needs, and everything else. The first pile goes in the application. The second stays confidential, recorded in a trade secrets register and guarded by NDAs and access controls.

3. Skipping the boring bits

Applicants tend to lead with the technical breakthrough, and describe that in isolation. That is natural, as they reflexively bring a lot of assumed knowledge.

Patents are not built that way though. Applicants will get carried away on including esoteric details that serve no purpose, and be averse to grinding through the foundation basics that save the day. Patents are structured with just enough foundational context to support the patent claims. This means block diagrams, hardware schematics and data flows that seem too obvious or mundane to include, but serve a critical role in meeting modern patent laws. Nothing can be added after filing, so they must be there on day one.  

Remedy: Include the foundational structure such as system block diagrams, a hardware schematics,  flowcharts for each method. Describe alternatives for every key element: a second sensor type, a different trigger, another place the processing could run. Ask whether a graduate engineer joining next month could build the invention from the application alone.

4. Relying entirely on the main claim

Your broadest claim will very likely be narrowed. And probably it should be, becaue you may want to claim slightly more than you expect you're entitled to. What matters is where the claims land.

Examiners cite publications you didn't know existed, and opponents in litigation search harder still. When claim 1 falls, the dependent claims are your fallback. If they add only routine or cosmetic details, or features a competitor can drop, the patent survives in name and fails in the market. The claims should be structured to add reall and substantive value.

Remedy: Run a prior publication search before drafting, so you know roughly where the closest publications sit in relation to your invention. Then build the claims as a ranked sequence of retreats. Each step adds one feature that distinguishes the invention from the state of the art and still covers what a competitor would build.

5. Treating the provisional as a placeholder

A provisional application secures a priority date only for what it actually discloses. A quick provisional to lock in the date offers less than it seems, especially in fast-moving technology areas. In Australia, a later claim takes the provisional's date only if the provisional discloses that invention clearly and completely enough for a skilled person to perform it. Major overseas offices apply comparable tests.

Anything that first appears in the complete application takes the later date, by which time your own launch or pitch deck or product launch may be a self-invalidating prior publication.  

Remedy: Write the provisional as if it were the complete application. Include draft claims, figures and alternatives, even though none is formally required. Diary the 12-month deadline for the complete or PCT application. When the invention improves materially, file a further provisional before you show anyone.

Bonus: Forgetting what the product looks like

Many copyists do not copy your engineering. They copy the look.

That may come as a surprise. But think like a copyist: they often want to borrow the buzz around your product, but replicate it at minimum cost. This can mean generic engineering, but with a similar silhouette with simpler engineering underneath.

A patent protects how a product works: its structure, its behaviour, or both. A registered design protects how it looks. Many customers buy on appearance alone and are not well placed to notice the quality difference. Registered designs are also convenient to enforce. Infringement turns on overall visual impression, which can be easier to demonstrate than patent infringement.

Remedy: Any product whose appearance is distinctive, consider filing a supplemental design registration alongside the patent application, before launch. The additional expense tends to be minimal compared to patenting expenses. Cover the whole product and ideally the more common replacement parts as applicable.

The checklist before you file

Every mistake above is a decision about what to protect, how and when. Most are locked in once the application is filed.

Before you file, answer seven questions:

1. Would a competitor need what claim 1 covers?
2. Have you separated what the claims need from what should stay secret?
3. Could an engineer build the invention from the figures and description alone?
4. If claim 1 falls, where does your protection land?
5. Would the provisional support the claims you will want in twelve months?

And: Does the product's appearance deserve its own registration?