Patent filing strategy for emerging robotics companies

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Robotics is currently recognized as one of the fastest-growing areas in technology, and this rapid development shows no sign of slowing down. These technologies have become crucial to a number of industries, from automation and artificial intelligence to security, manufacturing, electronics, and even medicine. Nasdaq reports that robotics technologies are expected to expand globally at an annualized rate of 22.8% over the next decade. It is estimated that by 2030 the robotics sector will be worth $214 billion due to demand for developments in the industry.

A robust patent portfolio is key to an emerging robotics company’s growth and success, but building such a patent portfolio takes strategy, time, and money. Thorough examination and understanding of a company’s individual business objectives, the landscape within the robotics industry, and country-specific patent rules and regulations are all important factors to ensure that resources are allocated appropriately and that a patent portfolio filing strategy meets the company’s needs.

This article aims to provide guidance on developing patent filing strategies in both the United States and overseas.

Basics of Patent Filing

Why File? An issued patent grants a patentee the right to exclude others from making, using, or selling the claimed invention, such as novel robotics technology, in the country that issued the patent, thereby giving the company an edge over competitors as well as helping the company attract investors. A robust patent portfolio, however, not only protects the patentee’s technology from being copied, but it can also be employed as leverage for cross-licensing or partnership opportunities that can provide the patentee access to additional technologies.

When to File. In most jurisdictions, an issued patent’s lifetime expires after twenty years from the filing date of the patent application. Companies may decide to delay the filings of patent applications for their inventions during the research and development stages, so the patents remain in force when the product is more mature and lucrative. However, the downside of this strategy is that it expands the universe of prior art, and thus may result in a narrower scope of protection, or even no protection at all.

Another common oversight during the research and development stage of a product or invention is its public disclosure prior to filing one or more patent applications directed toward the invention. A public disclosure may be a published article, a presentation, or an offer for sale. Publicly disclosing prior to filing is not necessarily fatal in the United States because the U.S. allows a one-year grace period before the applicant’s own disclosure qualifies as prior art. In contrast, many foreign jurisdictions, including Europe, Japan, and China, enforce an “absolute novelty” standard in determining what qualifies as prior art. Therefore, prior art in such jurisdictions includes everything made available to the public, whether by a third party or the patent applicant themselves, anywhere in the world, before the filing date of a patent application. Accordingly, applicants are not awarded a “grace period” from a public disclosure in such jurisdictions.

If applicants want to get ahead of prior art and public disclosures, they should file applications as early as reasonably possible. There is no requirement to actually reduce an invention to practice before filing a patent application. Therefore, once an invention is fully conceived, a company should consider beginning the filing process.

Types of Patent Applications
Utility patent applications cover how a technology works and, in the United States, generally fall into one of two categories – provisional applications and non-provisional applications. Noting the distinction between the two can be crucial for developing a filing strategy. Design applications can also be filed to cover the ornamental design of a product.

Provisional Applications
A provisional patent application is a less formal patent application that can be filed with the United States Patent and Trademark Office (USPTO) to establish a priority date for the invention. Provisional patent applications, uniquely, are not examined by the USPTO and cannot become an issued patent. Instead, the provisional application can be converted within twelve months of the provisional application’s filing date to a non-provisional patent application, which can then be examined and issued as a patent.

In general, a provisional application should be as complete as possible. However, provisional applications require fewer formalities than non-provisional applications. While at least a few claims may be helpful to define the invention, a provisional application may be filed as only a specification without any claims directed toward the invention, and with informal drawings.

While not examined, provisional applications remain useful for establishing an earlier effective filing date for one or more non-provisional applications that claim priority to the provisional application. The priority date is important as it serves to determine what prior art can be used against the non-provisional application. For example, the earlier effective filing date based on the provisional application would limit the scope of the prior art that antedates the provisional application’s filing date, rather than the actual filing date of the non-provisional application. Additionally, the one-year term of a provisional application does not count toward the twenty-year lifetime of a non-provisional application claiming priority to the provisional, thus effectively extending the term of patent protection.

Non-Provisional Applications
As discussed above, a non-provisional application can be filed claiming the benefit to a provisional application, claiming the benefit to a foreign application, or as an original application. Non-provisional applications differ from provisional applications in that they must include one or more claims, which are examined by the USPTO for patentability. During examination, an Examiner compares the claims filed with prior art to make assessments on the novelty and inventiveness of the claims, and the applicant may respond to the Examiner’s findings with arguments and/or claim amendments.

Once a non-provisional application is filed, an applicant generally cannot make any substantive changes or additions to the disclosure. That is, if amending the claims during prosecution, the applicant is bound by and cannot extend beyond the disclosure of the non-provisional application as filed. Therefore, it is critical that the technical description of the invention be as complete as possible at filing.

One or more follow-on applications, including continuations, continuations-in-part, and divisionals, can be filed during the pendency of the non-provisional application. Such applications are typically filed to pursue a different scope of claim coverage than that obtained in the parent, or original, non-provisional application. These follow-on applications may be strategically filed to pursue different embodiments and features of the invention. Therefore, the disclosure of the non-provisional application should be as robust as possible to fully support any embodiments that may be worth pursuing in follow-on applications.

The non-provisional application can be filed directly in the United States as a U.S. non-provisional application, as a Patent Cooperation Treaty (PCT) application, or both. If filed as a PCT application only, a U.S. non-provisional application can be filed based on the PCT application within 30 months of the earliest priority date, along with national non-provisional applications in other jurisdictions. This strategy may save money on the filing fee(s) but will also delay the examination of the U.S. application.

Domestic Filing Strategies

The above filing options can be strategically utilized by emerging robotics companies based on their financial standing and the maturity of their products in terms of development and launching.

Leveraging Provisional and Non-Provisional Applications
Because provisional applications require fewer formalities and are charged a lower filing fee, provisional applications are typically preferred to start the patenting process. Applicants may use the twelve-month period to convert a provisional application into a non-provisional application, to optimize the commercial embodiment of the invention covered in the provisional application, and to more fully understand the commercial implications of the product covered by the provisional application. For instance, the applicant may refine and test the design of the product, assess the market to determine the commercial viability of the product, and obtain capital from investors for launching the product during the twelve-month period to convert the provisional product. Another commercial benefit during the twelve-month conversion period is that the product covered by the provisional application can be labeled “patent pending.”

If improvements or changes are made to the product during the twelve-month conversion period, the non-provisional application claiming priority to the provisional application can be filed with an updated specification covering these changes. However, it is essential to realize that a claim in the non-provisional application is only awarded the filing date of the prior-filed provisional application if it is fully supported in the description of the provisional application. Therefore, any claims directed toward the subject matter first disclosed in the non-provisional application will be awarded the filing date of the non-provisional application as opposed to the provisional application. This means that provisional applications should be drafted as completely as possible, preferably with a detailed specification resembling what will be filed in a non-provisional application, so that all, or as many claims as possible, of the non-provisional application are supported in the provisional application and awarded the provisional application’s filing date. Moreover, applicants can file additional provisional applications as the changes occur and claim priority to more than one provisional application.

However, if the company has the necessary capital and an invention is thoroughly developed, such that the twelve-month period for conversion provides little benefit to an applicant, it may be best to immediately file a non-provisional application directed toward the invention. By eliminating a potential provisional application and the associated twelve-month conversion window from the filing strategy, the non-provisional application will be examined, and hopefully issued, sooner.

Examination Process
Once a non-provisional application is filed, the USPTO examines the claims of the application, and the prosecution process begins. Applicants should be aware that it typically takes years from filing a non-provisional application (or a direct or nationalized application in a foreign jurisdiction) until the application is fully prosecuted and matures into an issued patent. However, there are options for expediting the examination and prosecution processes.

Track One
An applicant may request to participate in the Track One program with the USPTO when prosecuting a U.S. application. The request for Track One participation may be submitted upon filing of the application or when submitting a Request for Continued Examination. Track One provides an application with a final disposition (a Notice of Allowance or Final Rejection) within twelve months of filing the request for participation in the program. Applicants abandon Track One procedure if an extension of time is taken when responding to an Office Action or if the claims are amended to include more than four independent claims or thirty total claims. The claims can be narrowly amended during Track One to ensure a quick allowance within the twelve months. Then, one or more follow-on applications can be filed to pursue broader coverage.

Patent Prosecution Highway (PPH)
For applicants filing applications in multiple countries, the PPH program may be an effective way to streamline and expedite prosecution across jurisdictions. The PPH is an agreement between participating jurisdictions, including the United States, PCT, China, Japan, South Korea, and the European Patent Office, that allows for an applicant to request expedited examination in a second jurisdiction where substantive examination has not yet begun based on a favorable ruling on patentability of substantially corresponding claims in a first jurisdiction. For instance, based on a favorable opinion in the Written Opinion of the International Searching Authority (WOISA) rendered regarding the claims of a PCT application, participation in the PPH program may be requested when prosecuting a corresponding U.S. non-provisional application.

Foreign Filing Strategies

Because the coverage provided by a US patent is geographically limited to the United States, many companies also file abroad. Two avenues are available for filing patent applications in foreign jurisdictions. The first is filing a PCT application, which can then be entered in multiple countries, and the second is filing a direct foreign application. Applicants should expect to pay filing fees, maintenance fees, translation costs, and fees for foreign attorneys who will likely assist in filing in each country. Therefore, to properly allocate capital, applicants need to carefully determine which countries are key territories in relation to the sale or manufacture of their product before spending capital in pursuit of patent protection in jurisdictions that are not commercially relevant to their company or area of robotics.

Conclusion

The above outlines several different filing strategies that an emerging robotics company should consider when building a portfolio. In order to intelligently leverage the above strategies, each with their own unique requirements and associated costs, a company should strive to carefully map out its commercial goals and project the potentially shifting landscape of robotics technologies.

About the Authors

This article was written by Roman Fayerberg, Shareholder at Greenberg Traurig LLP’s Boston office, Todd Basile, Shareholder at Greenberg Traurig LLP’s Dallas office, and Richard Brooks, Associate at Greenberg Traurig’s Boston office. Greenberg Traurig is a leading law practice with more than 2650 attorneys in 45 locations in the United States, Europe and the Middle East, Latin America, and Asia