Alternatives to patent protection

When trying to protect valuable inventions, patents are often seen as the “gold standard”. However, in many cases, patent protection is unachievable or even not the best solution. This might be due to the inherent costs involved, the subject of the invention being excluded from patent protection or other business reasons. So what should you do in these scenarios?

The first step should be to talk to your patent attorney, who can walk you through the various options. For example, even though you may have disclosed you invention prior to filing a patent application, you might still be able to obtain a patent. However, in cases where these provisions do not apply, what other forms of protection are available?

Trade Secrets

One option is through the use of trade secrets, such as Coca-Cola’s infamous secret recipe or KFC’s mysterious blend of herbs and spices. If your invention cannot be reverse-engineered from any product or service that you provide, then you may be able to prevent your competitors from reproducing your invention simply by controlling access to information about your invention through trade secrets measures such as non-disclosure agreements and non-compete clauses.

One advantage of this method of protection is that you are effectively able to prevent any of your competitors from copying your invention for as long as you are able to keep your invention secret. If the information on your invention is unlawfully acquired, used or disclosed, as long as you have taken adequate measures to protect the information, you may be able to take measures to prevent further dissemination of the information or obtain other remedies including damages.

However, if a competitor reverse engineers your invention, or arrives at the invention independently, you will be unable to prevent them from performing the invention themselves, or possibly even seeking their own patent protection.

Therefore, if you wish to protect your invention through the use of trade secrets, it is worth expressly and confidentially documenting as much information as possible about what constitutes the secret information and the invention, both to ensure adequate documentation to address a breach of confidence and to act as a defence against a potential suit for infringement.

Utility models

Sometimes referred to as a “petty patent” or “innovation patent”, utility models are an increasingly common alternative to patent protection. In 2020 alone, over 3 million utility model applications were filed worldwide, with almost 98% of these applications being filed in China. Similar to patents, they can both act as and claim a source of priority, and, in some territories, it is possible to convert a patent application into a utility model, meaning they can be obtained through existing patent pathways and IP management.

Although many territories offer different utility model regimes, many territories do not assess the novelty or inventive step of utility model applications on filing, and instead only examine whether the application meets the respective formal requirements. This means that utility model applications are frequently granted much quicker than patent applications, and can therefore be enforced much more quickly against any potential infringer.

Furthermore, even if the novelty and/or inventive step of the invention is assessed, either on filing or when infringement is alleged, frequently the standards for novelty or inventive step are less onerous than those applied to patents. This may allow a utility model owner to obtain and enforce a broader scope of protection than may be obtained with a corresponding patent.

These reduced requirements often correspond with reduced costs when compared to patents, both in terms of the initial filing costs and maintenance costs throughout the lifetime of the utility model.

However, utility models tend to have shorter periods of protection than patents, usually conferring a monopoly for around 10 to 15 years. Additionally, in many territories, the types of subject matter that may be claimed in a utility model are narrower than those that may be protected by a patent. For example, many territories do not allow protection of processes or methods of manufacture by utility model. Furthermore, many important territories, including the UK, Europe as a whole and the USA, do not offer utility models as a form of intellectual property.

Nevertheless, utility models remain a form of intellectual property protection that is increasingly relevant in fields where improvement is rapid and incremental, and therefore where traditional patent protection may not be the best solution.

Designs

If you wish to protect an idea or product that is less technical in nature, protection may be obtain through design protection regimes worldwide. Designs can protect the appearance of all or part of a product, and can arise both through registered designs, obtained through application to IP offices in the territory in question, or unregistered design rights, which arise automatically from the creation or publication of the design.

Registered designs often provide a monopoly right for a period of time, in some cases up to 25 years, to protect the appearance of a whole or part of a product (including its inside) and may arise from the lines, contours, colours, shape, texture, material or ornamentation of the product. Usually, an applicant for a registered design must demonstrate novelty (i.e. that the design is different from prior designs by more than immaterial details) and individual character (i.e. the design creates a different overall impression on the informed user) over prior designs made available to the public by use or publication. Multiple designs can be filed for in the same application, which frequently saves costs, and the concept of priority also applies to designs, as well as international protection regimes, in a similar way to patent protection.

In some territories including Europe and the UK, unregistered design protection can arise automatically, without the need for a formal registration. However, like copyright, in order to successfully prove infringement of an unregistered design, the owner of the design must prove that the design has actually been copied by the alleged infringer, which is not always straightforward. The period of protection for an unregistered design is also usually shorter, ranging from 3 years in Europe and for some designs in the UK to 10 to 15 years for other designs in the UK.

Although they cannot protect the same subject matter as patents, designs still offer an interesting means of protecting your intellectual property in a variety of territories.

Other methods

Other methods can be used to protect your ideas and products, such as plant variety right protection. However, sometimes you do not want or need to protect a particular idea or invention yourself, but would rather prevent your competitors from claiming the same subject matter. In these cases, the concept of defensive publication can be a useful tool. Simply put, by disclosing your idea or invention to the public, either by publication or otherwise, you can prevent anyone else from claiming that subject matter in their own patent application. The obvious advantage is the minimal costs involved, but if you decide you do want to be able to protect this invention yourself, your options at that point will be much more limited.

One alternative to publication in this way is inventor certificates. Although this method of intellectual property protection almost disappeared with the collapse of the Soviet Union, North Korea still offer these as an acknowledgement of an invention, but without the monopoly rights afforded by a patent. However, these certificates are still published, and can serve as prior art against a potential patent application by a competitor for the same subject matter.

Conclusion

Even if patent protection is not the best solution to your business needs, a wide variety of intellectual property solutions are available. However, it is important to talk to your patent attorney before taking any specific action. In this way, you can ensure that the correct steps are taken to maximise your position.

Max Bertrand