Navigating through the web of patent thickets, obtaining necessary licenses is often a cause of concern for small and medium enterprises as besides the process of research and development of new innovations also high costs are also involved in obtaining necessary licenses, aimed to avoid infringement of the existing patent rights in any particular field.
Meaning;
With this premise let us firstly glance at what Patent thickets are ? They are set of patent rights that cover a particular technology, such patent rights are overlapping and complementary and form a cluster of patents which may be owned by same or different companies.
If we look at the scenario of research and development of technology in any specific field, a large numbers of patents already exist, covering various major and minor new aspects of the new technological advancement and this inevitably leads to creation of Patent thickets.
Thus, as discussed Patent thickets can be a result of natural process of continuous innovations in any field of technology, but adding to the woes of new innovator is the trend of acquiring patent protection for minor incremental advancements which can be attributed to such strategy employed by the corporates to prevent competition.
Although not restricted to any particular field of invention, patent thickets are more so present in software or pharmaceutical fields. An example of such patent thickets can be found with regards to prescription drugs. It is not uncommon to find prescription drugs which are in demand, protected by multiple overlapping patents obtained not only for active ingredient, but for process, delivery system etc. Indian Patent law has been a deterrent to such practices since the biggest downside of this can be witnessed in delay in availability of affordable generic version of the drug in market.
The Problem:
Patent thickets create a difficult environment for new inventors, small or medium enterprises. It results into the process of entry of new inventors and competitors to be an uphill task. To avoid infringement, new researcher has to take many licenses in his field of research, compensating the existing patent holders in order to develop novel product or process and has to manoeuvre through network of overlapping patents covering any particular field of invention.
Navigating through Patent Thickets:
Vital strategies that help to overcome the hurdles created by such web of patents:
a. Comprehensive prior art searches
The first and foremost step involves conducting prior art searches to identify existing patents and patent applications in the particular field of interest, which helps in understanding the landscape preventing infringement of existing patents. Patent Mapping is important, post patent search, as this presents a detailed information on the links between the relevant patents and areas overlapping and presents opportunities regarding areas of freedom to operate.
b. Freedom to Operate (FTO) Analysis, this reports on the area open to research and development in a particular field of inventions. At this stage, Patent Attorneys help to analyse the scope of relevant patent and to obtain opinion on how to mitigate risk of patent infringement.
c. Cross Licensing, by cross licensing agreements, companies agree to share their patent portfolio. Taking such cooperative measure can aid in preventing litigation and can open doors to collaborations.
d. Patent Pools, are created when multiple organisations holding patents in a specific field, collaborate by coming together and agree to license their patents as a bundle, which definitely proves advantageous against approaching each Patent holder for acquiring license. This also helps in getting a clear picture and directing the research and development around the existing Patents avoiding the possibility of infringement.
Patent Aggregators, though not prevalent in India, many countries have witnessed the increase in number of Patent aggregators. What are they? Patent aggregators are often referred interchangeably with patent trolls, Patent aggregators acquire patents and do not actually manufacture the products, rather they build patent portfolios and monetise by licensing such patents. Patent aggregators have acquired prominence in current scenario. They bundle and license patents. Hence, negotiations with patent aggregator can be a part of strategy while navigating through patent thickets.
These are some of the vital steps to help effectively navigate through Patent thickets and protect your innovation while reducing legal risks. In addition engaging experienced Patent Attorneys will help in navigating through complex Patent landscapes and in conducting FTO analysis as well as Patent litigation or negotiations.
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