[Patent Talk] The Dilemma of Creating Patents

This column by patent attorney Taeyoung Lee of our firm was published in Etoday on February 1, 2021. It discusses the right mindset for filing patent applications when you have made a new invention.

[Patent Talk] The Dilemma of Creating Patents

It is only natural to file a patent application when you have made a new invention. In fact, many clients come to their attorneys asking to file an application while crying "Eureka!" like Archimedes. Reality, however, is not so easy. Just as people tend to think alike, many ideas turn out to have already been disclosed in patents years or even decades earlier. Clients then give up on filing.

The opposite also happens. Many people decide, without good reason, that a product they have newly developed is not worth patenting and give up on filing, even though it could have been patented. The worst case is discovering that a third party later filed for the very idea you did not file and obtained a patent on it. If you publicly worked the product covered by that patent before the patent was filed, you can seek to invalidate the other party's patent; if you worked it, or prepared to work it, non-publicly, you can assert a prior-use right. Otherwise, you will be unable to practice the invention even though you invented it first.

This is the dilemma we face. Sometimes we abandon what we thought was a great invention because similar prior patents exist, and sometimes we give up filing because we think the invention is not new, only to find later that a third party has obtained a similar patent. I often experienced this dilemma myself while working as an in-house patent attorney.

Why does this dilemma arise? There are various causes, but the main one is a misjudgment driven by the desire to secure pioneering patents. Believing that only pioneering patents matter, people abandon filing as soon as they find prior patents with a similar overall concept, or undervalue their own ideas from the start and never file at all.

To overcome this dilemma, when you have a new idea or product, unless it is completely identical to a prior patent or product...

(Please click the link below to read the full column.)

LNB IP Law Firm