Patent Strategy for Researchers and Research Managers, 3rd Edition

Chapter 7

Disclosure and Filing Decisions

7.1 Introduction

Patents are an excellent source of information on how companies make their products and run their processes. Patents can disclose why prior inventions are flawed and can indicate the preferred elements of new, improved inventions. They disclose what parameters are important to a patented process and disclose preferred operating points for processes. Competitors can learn valuable information about each other's technology and business from each other's patents. Since patents play such a major role in the development of technology, companies must monitor the patent art to make sure they are aware of current developments. Because competitors will be reading and studying patents, one should try to avoid disclosing any more information in one's patents than is absolutely necessary. However, controlling the amount of disclosure is not a simple exercise.

Along with controlling disclosure, the decision whether or not to file a patent on an invention may be critical to the success of a business. This is because the invention will be likely disclosed regardless of the success of the patent application. If a patent on the invention is granted, the assignee will obtain a limited monopoly on the invention, but only in the countries where the application is filed and the patent is subsequently granted. If the patent doesn't issue, the assignee has no reserved rights in the invention, and since the invention is disclosed, anyone can use ...