[Patent Talk] Securing Patent Rights for Core Technology: The Desire and the Dilemma of Disclosure

When you develop a new technology and file a patent application, the content of that application will be made public unless the application is withdrawn. Ordinarily, the patent application is laid open once 18 months have passed from the filing date, and if the patent is later granted and registered, a patent registration gazette is issued. If a request for accelerated examination is filed to speed up examination, however, a decision to grant may be issued before the 18-month point, in which case the patent registration gazette is published right away.

The patent system grants the patentee an exclusive right for a fixed period in exchange for disclosing the technology. This is because disclosed technology can be used by third parties, which helps advance industry. From a public-interest perspective, disclosure of patent applications is desirable, but from the applicant's perspective, disclosure can be a double-edged sword. If the application is rejected, or is registered with only a very narrow scope of protection, the technology ends up being disclosed with little or no meaningful protection.

Of course, this risk can be reduced to some extent by leaving technology that should be protected as a trade secret out of the patent application. In practice, however, there is always the risk that trade secrets will leak through reverse engineering, and when a trade secret could also be patented, it is genuinely hard to resist the temptation of filing a patent application that would confer a strong exclusive right. This issue arises frequently with software patents in particular. If a core technology on which a company's fate depends is disclosed without securing an adequate scope of protection, the patent application can backfire like a boomerang and make the business worse, because well-funded competitors can study the published patent and quickly catch up.

In such cases, it is essential to file a request for accelerated examination to find out as quickly as possible whether the patent will be granted and what scope the granted claims will have. In doing so, the system operated alongside accelerated examination ...