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The Law of Unintended Consequences

by | Jun 23, 2014

I reflect this morning that nature is indeed a cruel mistress; driving to work, I could not help but notice the soft ding coming from the bonnet of my car subsequent to a pair of small birds flying out of the hedge in the direction of the A40. That there was only one noise magnifies my guilt, since I have likely killed a single bird of a breeding pair.

Following my apparent hit-and-run, I am now morbidly mulling over the consequences of my actions. What if the bird was a white-throated needletail, and that was the only breeding pair in existence? For all I know, I may have sounded the death knell for an entire sub-species of bird, now never to grace the skies again. So it goes.

Such thoughts would appear to be practical expressions of Chaos Theory, the branch of mathematics pioneered by such heavyweights as Edward Lorenz, Benoît Mandelbrot and Ian Malcolm. One of the most profound principles of Chaos Theory is the so-called Butterfly Effect, stating that small changes in one place in a deterministic nonlinear system results in large differences in a later state of the system. Put into its commonly used context, seemingly minor acts can have massive unintended consequences.

Unforeseen Consequences

To mitigate the effects of unforeseen consequences arising from even the most minor acts in everyday life, we are trained to try and imagine what possible effect our actions may have in the future. The obvious problem with such predictive analysis is that we never know enough about what may happen in the future, and can never truly predict what is going to happen; we can only ever make educated guesses.

It is when making these leaps with the requisite knowledge that we are enabled to step into the future with some level of confidence regarding the outcome. On the other hand, acting with an incomplete view of a situation is liable to cause problems in the future; the Butterfly Effect in action. This is as true in the realm of Intellectual Property as it is anywhere else.

Enablement

We find, as patent attorneys, that many people are aware of the concept of a ‘provisional patent application’, whereby you apply for a patent outlining the details of your idea, and then ‘fleshing’ the concept out before the application undergoes examination. What exactly does this mean, however? There are substantial differences between patent laws in respect of provisional protection in various countries, particularly in the US, and it is important to be aware of these before filing an incomplete application.

In the UK, a functional equivalent of the US provisional patent can be achieved by filing the description of your invention upfront, but deferring submission of the claims of your application, that is, the portion of your application defining the legal scope of your protection, for up to twelve months. However, you must file a description at the time of filing your application, and this must sufficiently disclose the invention so as to allow someone skilled in the field of the invention to reproduce it, so-called ‘enabling disclosure’. Following filing, you are not permitted to add additional subject-matter to your application which was not present at the time of filing.

Full Disclosure

By not filing a complete patent specification at the time of filing, the applicant opens a veritable Pandora’s box; their incomplete description may not be sufficiently enabling to allow for the level of protection that they wish for their invention, and they are unable to add additional matter to the application subsequent to filing.

There are two possible scenarios of incompleteness. Firstly, the applicant may not have provided ‘enabling disclosure’ in their specification, that is, someone reading the specification may not be able to perform the invention. This can result in an invalid patent.

Alternatively, the applicant may have sufficiently disclosed their invention to an ‘enabling’ standard, but may not set out the advantages of the invention, and the underlying features that bring about those advantages. Such a patent may grant, but will only have claims which are specific to the product which was described in the filing, and not necessarily to the underlying invention or inventive concept.

Often, the best course in such a scenario is to withdraw the provisional application and refile it with all of the necessary components included from the date of filing. However, this refiling will lose the date of filing of the ‘provisional’ application, and therefore the applicant risks a third party having filed an application for the same invention in the interim period which will invalidate the newly filed application. Alternatively, the applicant can claim priority back to original application, and hope that the priority claim remains valid in spite of the deficiencies of the parent. Sometimes this works, and sometimes it doesn’t; the real question is whether it is worth the risk.

At Albright Patents, we would always suggest filing a full patent specification from the outset, thereby avoiding the pitfalls associated with incomplete applications. The additional benefit is that your full application can promptly undergo a validity search conducted by the UK Intellectual Property Office, typically returned in four to sixth months, which will give you a strong indication of your prospects of obtaining strong patent protection prior to the twelve month deadline for filing for patent protection overseas.