Patents are an excellent tool for protecting an invention.  A granted patent gives the right to prevent others from selling, manufacturing or importing a patented product or from using a patented process.

However they are also expensive to obtain and must also be filed before an invention is made public.  They are also not the only means of securing your intellectual property position – so how do you decide when a patent is going to be useful for you?

This post discusses some of the practical factors that should be taken into account when deciding whether or not to file a patent application.

Commercial Case

Fundamentally, any patent protection must have a specific commercial purpose.  You need to understand what a patent does and why having one will benefit your business.

One of the most common mistakes I see is filing in too many countries.  Extending the geographic scope of protection represents a substantial increase in costs as there are costs involved in getting each patent application granted and then in renewing the granted patents.  Failure to have a proper commercial plan that provides justification for the protection for each country, or to review the plan on a regular basis, is a waste of money.

Trade Secrets

Some inventions do not need to be disclosed when you sell related products or services.  While it is important to describe to customers what you do, it is not always necessary to divulge how you do it.  Examples of this might include novel server-side scripting processes that are invisible to end users, or a new industrial process for making a product that cannot be deduced or reverse engineered from the product itself.

In that scenario, it is often advisable to rely on keeping the invention as a trade secret rather than applying for a patent, seeing as patent applications are published.

Patents are also limited in time, generally offering 20 years of protection.  In contrast, trade secret protection does not expire, unless of course the secret is disclosed.

In most countries there is no specific “trade secret” legislation.  In the UK, trade secrets are protected under the common law of confidence, in other words as “confidential information”.  There is therefore no registration and no cost involved in obtaining trade secret protection.  However, the secrets must have commercial value because of their secrecy and reasonable steps must be taken by the rightful holder of the information to keep it secret, through measures such as confidentiality agreements or internal record-keeping.

Asides from the main risk of secret information being disclosed either accidentally or against your wishes, one potential downside to the trade secret approach is the possibility of a third party independently making the same invention and then obtaining their own patent for it.  That patent could then prevent you from exploiting the same invention.  There is a “prior secret use” defence in patent law but the defence is quite narrowly applied and we would advise against relying on it as a matter of course.


There is no rule that says a patent has to be of any particular length.  However, a patent has to describe an invention in an enabling manner.  Patents can be revoked if they do not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the relevant technical field of the invention.

The principle behind this is that you should not be allowed to gain the benefit of the monopoly without “giving the game away”.  So, in order to fulfil this criterion, the invention needs to be described in sufficient detail to enable a person skilled in the technical field of the invention to understand it and to implement it.

Full step by step implementation instructions do not have to be provided, but important details cannot be left out and the invention that the patent description has to be technically sound.

These factors often play a part in deciding whether or not to patent an invention.  Experience helps identify the parts of an invention that need to be disclosed in a patent application, and parts that can be kept aside as “know-how” to be protected as trade secrets.  If the patent application cannot be filed without disclosing commercially sensitive material then the reasons for filing must be thought through carefully.

However this issue is rarely in itself a “deal breaker”. What it means in practice is merely that when preparing a patent application you need to think about whether you are happy for the subject matter to be published.  Usually this involves culling some sensitive information from a technical write up that is not necessary in any event for defining the invention.

Detecting Infringement

Another important question is whether you can detect an infringement of your patent once it is granted.  If the invention that you have patented cannot be detected by the sale of your competitors’ products, then it will be difficult to prove that they have infringed the patent.

The protection of an invention where it is impossible or very difficult to detect infringement is generally of less value than protection for an invention that can be clearly detected.

Defensive Publications

An invention must be novel and inventive for a valid patent to be granted.  Any disclosures made in the public domain before the filing date of a patent application count as “prior art” that has to be taken into account for the assessment of novelty.

This means that if you publish an invention, it creates prior art that will prevent third parties gaining valid patent protection for that invention.  This technique is known as defensive publication.

If you have an invention that you decide not to patent, you may still publish the invention for these defensive purposes.  If a third party applies for or obtains a patent and tries to use it against you, the publication can be used as a negotiation tool, and ultimately may be used to oppose the application or revoke the patent.

When considering this strategy, it is vital to make the publication in such a way that the date of publication is accepted by a court.  There are several commercial providers that provide verifiable publication services.  It is also possible to make publications yourself, but you will need to make sure they meet the relevant criteria.

It is of course also possible to be selective about what goes into a defensive publication.  Ideally, you should not include any sensitive trade secret information, but disclose enough material to create a prior art effect for future third party patents.


Enforcement of patents is one of the biggest practical objections that people have to the patent system.  Patent trials are very expensive due to their complexity, and so smaller companies will of course find it more difficult to litigate than larger companies.  When patenting an invention, you absolutely need to be aware and be realistic about the issue of enforcing your rights.

However, the cases that are litigated represent only a small fraction of actual patent disputes that arise between parties.  In most cases neither side really wants to litigate and so it is very common for settlement to be reached without launching proceedings, and even for the small amount of disputes where proceedings are launched it is still common for parties to settle before the cases come to court.

I would also argue that any licensing of the patent represents an “enforcement” of the rights, because the patent provides the property that is being paid for in the transaction.  Without the patent there would either be no licence deal at all or a deal with a reduced value.

And of course these factors are also taken into account by third parties such as investors or potential buyers of your business, who view the protection of intellectual property as adding value to the business and providing additional revenue streams.


All blog posts on this site have the general caveat that they are for general information only and do not constitute legal advice.  This applies in particular to the issues highlighted in this post.  The information above is a summary of some important points and there are many subtleties and additional information that it has not been possible to include.  These issues need to be carefully considered before deciding on a course of action for any particular case.

Nevertheless, I hope this post gives you some useful information and an insight into how to decide when to patent or not.

Of course we are available to chat through any specific queries – you can contact us at or you can tweet us at @ScintillaIP though don’t include any sensitive information in your tweet!