Lawyer Monthly Magazine August 2020 Edition

Greg Whitehead Greg Whitehead of Shelston IP is an expert in patent preparation and strategy with a proven track record of successfully preparing, prosecuting and enforcing com- mercially relevant patent rights. Greg’s work has led to signifi- cant commercial outcomes for Shelston IP’s top tier clients, ena- bling them to establish and main- tain dominant market share and related competitive advantages across a broad range of science and engineering fields. Shelston IP Shelston IP acts for world-leading innovators who are continually developing new and clever prod- ucts ranging across chemical engineering solutions, electrical and electronic systems, medical devices, mining equipment and pharmaceuticals. These innova- tive companies rely on a port- folio of patents, amongst other business tools, to maximise their return on investment in research and product development. 31 AUG 2020 | WWW.LAWYER-MONTHLY.COM of a potential competitor seeking to work around and avoid the patent. How are improvements to an invention dealt with under the patent system? What is the best way to go about this? Initially, when a patent owner or applicant makes an ‘improvement’ to an invention which is the subject of an existing patent or patent application, it should be dealt with in the same manner as any new invention. That is, the details of the improvement should be kept confidential until the commercial position and related patent strategy has been established. The key features of the improvement should be read or compared against the content of the existing patent application to assess whether or not the improvement is covered by the existing patent, or if there is potential to amend the existing patent application to better cover the improvement. Should it be determined that the existing patent application does not cover, or does not adequately cover, the improvement and the commercial potential of the improvement is deemed to be significant in its own right, a new patent application could be prepared and filed to cover the improvement. It will, of course, be necessary that the improvement detailed in the new patent application be new and inventive/non- obvious over the existing patent or patent application as well as any other relevant prior art information at the time of filing the new application to meet the requirements for patentability. The strategy of pursuing independent protection for commercially significant improvements assists in building a robust and flexible patent portfolio that can keep an inventor ahead of competitors as they enter the market, particularly those seeking to leapfrog off the groundwork laid by the original inventor. Contact Greg Whitehead Principal Shelston IP Level 9, 60 Margaret Street, Sydney NSW 2000 Australia P +61 2 9777 1170 M +61 405 454 226 GregWhitehead@ShelstonIP.com www.shelstonip.com benefits to an inventor, it is critical to gain a sound understanding of the inventor’s commercial objectives before preparing the application. Understanding the commercial objectives from the outset provides a basis for determining the structure of the patent application, particularly the claims which will define the scope of protection. For example, the nature of the invention and the related commercial strategy will determine whether a patent application should be directed towards a system, an apparatus, a method, a process, or a combination of these. It can also be important to be aware of the context in which the invention is used within a particular industry such as, for example, the particular stage of a supply chain. Thus, a consideration of the relationship with relevant upstream and downstream parties will play a part in determining how best to frame a patent application. For these reasons, a patent application should be prepared from the viewpoint AN INTERVIEW WITH SHELSTON IP “ To properly frame a patent application that will offer the maximum potential benefits to an inventor, it is critical to gain a sound understanding of the inventor’s commercial objectives before preparing the application. “