PD101 – Patent Breaking

PD101 is our series on insights and advice into the less common elements of the Product Development Process. Today we talk Patent Breaking.

Patent breaking is one of the lesser known ways we help our clients.

Commonly, by the time a client has approached us to assist with design, engineering or commercialisation of their solution, they already have an innovation under development. It’s also common, particularly amongst start-ups and clients who are new to the product development process, to find that some form of protection is already in place to protect the innovation and its implementation. 

While there is no singular timeframe for when to patent an idea, the two most common approaches present us with a classic chicken-and-egg scenario. 

Both scenarios are sound, and both have associated risks. However, we dislike risk. You’ll notice we don’t say that risk is bad (it is inherent in the process!), it just has to be managed and mitigated wherever possible.

Scenario 1
The chicken came first.

In this scenario, the client already has some form of protection (such as a provisional patent) in place to protect the innovation. This generally occurs in conjunction with a patent attorney, before the client has begun to seek assistance with development.

What’s the risk?

Provisional patents have short expiration dates. They can be extended by beginning the PCT process. But time constraints still apply and this means renewal costs can begin to add up as we work through the development process.

Secondly, a client might find themselves somewhat locked into their patented solution and the associated claims. What if the claims don’t match the final commercial implementation? Or if they have been written poorly, or too specifically? 

This is not necessarily a problem unless a new solution or implementation is developed that deviates from the patented claims, and is possibly superior.

For example, the patent may refer specifically to parts that must rotate in the implementation, where they could in fact slide, or where a main feature is located on one significant part only, but could in fact be re-positioned to another part.

Scenario 2
The egg came first.

In this scenario, the client has sought to engage assistance with product development before incurring the costs and effort that comes with lodging patents. This allows us more time for development, be it design, engineering, prototyping or testing.

What’s the risk?

The client may need to engage a number of different suppliers, partners or investors to assist with development, requiring disclosing of the innovation through an NDA (Non-Disclosure Agreement). 

This is sound practice, as long as the confidential information doesn’t end up in the public domain. If it does, the right to patent may be forfeited.

There is also a risk that somewhere along the way, the information may fall into the wrong hands, making it to market before the client, and invalidating any competitive advantage and business case. Whilst this is unlikely, and we’ve never seen it happen (touch wood), it is an inherent risk.


If It Ain’t Broke, Break It

Yes, you read that right. Sometimes a client has only gained protection of their innovation because of the unique wording of their implementation. In that case we must develop within those constraints. 

However, where the solution is novel, limiting a patent to the exact commercial implementation only limits protection, and makes it easier for competitors to get around a patent.

This is why we always suggest clients go through the process of trying to break their own patent. This can be done by asking questions like:


“What would a competitor do?”

“How could they get around the protected implementation?”

“How else could the solution be developed if it couldn’t be as listed in the patent?

How We Can Help

We aren’t patent attorneys (but we know a few good ones, and have worked with many). We are innovators and problem solvers, very good at finding new ways to do things, and also, finding other ways to do the same thing.

For clients who have already lodged a patent, we run a simple patent-breaking exercise designed to test the brute strength of their patents. We’ll take the patent, review the main claim (and additional claims as needed or requested), and ask the question: if this was a competitor’s patent, how could we get around it?

The findings are documented and prepared for review by the patent attorney, who will then provide advice on whether the claims are strong, need amendment, or a new patent should be lodged (in extreme cases).

For clients yet to lodge, we suggest the patent-breaking exercise is completed prior to lodgement. More often than not, we’ve already come up with other implementations during the development process, and it’s simply a case of formalising these so they can be presented to a patent attorney. This offers the broadest possible coverage in the patent, protecting as many implementations as possible.

This is all part of our focus on complete Precision Product Development for our clients.

Let The Expert Team At Whistle Help You Get Your Project To Market.

Considering working with us? Make sure to protect your innovation. Need guidance with patents? Get in touch.