The patent process is complex. Quantum technology is even more complex. Increasingly, many technology companies find themselves at the intersection of these two complex worlds.
Although the patent process is expensive and the commercial play is still uncertain, the value proposition for patenting quantum technology is attractive. Here’s why quantum patents are considered valuable, in a nutshell:
- The 20-year time frame of a patent monopoly dovetails nicely with many industry projections of commercial viability.
- Publishing facilitates the collaboration needed to keep technological developments moving forward.
- Every step along the process may be ripe for a patent since the technology is still in a pioneering stage.
As a patent attorney with a PhD in quantum computing, I started working on patent applications for quantum technologies very early in my career (before all the hype!). Over the years, my law firm has drafted and prosecuted hundreds of patent filings for quantum technologies, and we’ve successfully secured patent protection for our clients in several countries around the world.
Here are some tips from our experience.
The Patent Process, Step By Step
The patent process is generally the same for every type of technology, and there’s nothing fundamentally different about patenting quantum technologies — the same best practices apply. But there are some considerations that might be more pertinent or have a different flavor in the world of quantum tech.
1. Contact a patent attorney who’s familiar with quantum.
Shameless plug, I know. Having a patent attorney with technical savvy is always important, but even more crucial with highly complex technologies like quantum.
Ten or 15 years ago, it was hard to find a patent attorney who knew even a little about quantum technologies. I know this because I got a ton of cold calls from people who were searching for one, and apparently I was the only person they could find!
It’s different today. Since quantum computing research has been so well funded for years now, there are many patent attorneys who have developed the right background and experience for this work, and several who, like me, have a PhD in quantum computing.
2. Strategize timing.
There are certain time frames that are important in the patent process. Generally speaking, the best practice is to file patent applications before sharing information outside your company — before discussions with customers, submitting a manuscript for publication, etc. If possible, it’s a good idea to file a patent application before you begin any type of collaboration with a third party.
With quantum technologies, it’s difficult to know which ideas are going to be viable in a technical and commercial sense. There might be a temptation to wait and see if an invention gains traction before investing in patent protection. But you have to balance the desire for certainty with the risk of losing patent rights or getting scooped by a competitor.
File early and file often, if you can.
3. Know the prior art.
Getting your patent application approved by the patent office depends on the patent examiner finding your invention to be “non-obvious” or “inventive” relative to the prior art. This is often the most difficult hurdle in the patent process, even for cutting-edge technologies like quantum.
When you start the patent process, make sure your patent attorney is aware of the closest prior art — relevant publications, patent filings, and products that have come before yours — and make sure you disclose them to the patent office in the patent application.
Inventors are often a great source for knowledge of prior art. We often work with inventors who are experts and therefore aware of journal publications and significant developments in their fields. In many cases, it’s a good idea to supplement the inventors’ knowledge with a patentability search.
It can be extremely valuable to have a strong understanding of the prior art when you’re preparing the patent application, helping you avoid issues later. For example, you can anticipate the types of rejections that an examiner might lodge, and you can draft the patent application in a way that allows you to strategically navigate potential obstacles.
4. Consider provisional filings.
A provisional patent application is an informal patent filing that gives you 12 months to file a formal non-provisional patent application. Provisional filings are a great option for technologies that have a long development timeline, where commercial value is farther out in the future. This is because the time frame between the provisional filing and the non-provisional one doesn’t count against the enforceable life of the patent. The 20-year term of the patent is still measured from the non-provisional filing date, so you effectively extend your patent term by a year.
Provisional applications also allow you to account for improvements or developments within a year of filing. You can add new information when you convert the provisional application to a non-provisional application. The ability to capture new developments, although limited to this one-year window, can be extremely valuable in a rapidly developing field like quantum computing.
The provisional application should include an explicit description of everything you want to claim in the eventual non-provisional application. Draft a thorough provisional application, and use the non-provisional application to capture further developments that happen after the provisional application is filed.
5. Draft your patent application strategically.
The patent office may raise any number of issues with your patent application. Craft your application to avoid rejections and defend against challenges that competitors might bring after the patent has issued.
One of the biggest challenges in the patent system right now, for all technologies, is the uncertainty around “subject matter eligibility.” In the patent process, this challenge arises in the form of so-called “abstract idea” rejections based on Section 101 of the Patent Act. I will discuss these issues in detail in my forthcoming blog post, “Alice in Quantum Land: Risks and Challenges in Patentability.”
Here are a few tips for overcoming hurdles and making your patent application robust to a range of potential obstacles:
- Describe the technical problems that the invention solves.
- Describe the invention’s advantages over the closest prior art.
- For method inventions, describe specific hardware to implement the invention.
- Describe the invention in the context of alternative quantum computing platforms.
6. Talk to your patent examiner.
Most patent examiners are well-trained, educated professionals who have degrees in science or engineering, and might even have some industry experience. But they rarely have a deep technical background in the exact technical field of the applications they evaluate.
Therefore, it’s often useful to talk with patent examiners during the patent process. Usually we do this in an examiner interview after the first round of examination, after the examiner has gotten familiar with the content of the patent application. (There are opportunities to conduct examiner interviews earlier in the process, which can be useful, as well.)
Remember that the examiner interview should be a conversation, not a one-sided argument. While I’m always advocating for my client, this conversation helps build credibility and support with the examiner.
On one hand, it’s important to educate the examiner on the technical nuances of the invention. I’ve found that examiners usually appreciate a brief primer on the technology to help them understand the invention and the prior art.
On the other hand, it’s also important to listen to the examiner and understand any of their concerns. This can help resolve issues efficiently, and can even lead to a stronger patent.
Catch the Quantum Wave
As mentioned before, quantum technology is ripe for patenting for a number of reasons.
Quantum technology research and development is enormously expensive and companies want to see a return on investment. While maintaining a trade secret is usually a cheaper option for companies seeking to maintain an advantage over the competition, the nature of the quantum field often requires publication and collaboration, even across (friendly) enemy lines. For most companies, this all weighs strongly in favor of patenting.
Quantum technology is an ecosystem with many contributors. Major developments will likely require cooperation and partnerships across different players in the field, giving rise to opportunities for cross-licensing in collaborations with other companies. Owning some of these patents will make you an attractive prospect.
Finally, think about how previous waves of emerging technology moved through stages of development from research to commercial release to saturation. Innovations within more developed technologies are typically harder to patent because of the foundation of prior art. We are still in the early days of quantum.
At this point, there are still significant developments to come in a wide range of quantum technologies, and each step along the path will require substantial innovation that will most likely be ripe for patent protection. Progress is in steps, and these increments can be patented.
Michael K. Henry, Ph.D.
Michael K. Henry, Ph.D., is a principal and the firm’s founding member. He specializes in creating comprehensive, growth-oriented IP strategies for early-stage tech companies.