The best practice when protecting a product or service using patents is to apply to protect any inventions that are incorporated into that product or service prior to any public disclosure, sale, offer for sale, or commercial use of that product or service. This reduces the risk that those inventions will be publicly disclosed prior to a patent application being filed, which helps ensure compliance with worldwide patent requirements. A failure to file a patent application before you disclose an invention publicly can have negative consequences on your IP asset.
However, during the current COVID-19 public health crisis, you may not be able to invest the time and money on a patent portfolio that you normally would. Depending on your risk tolerance, you may be able to trade off risk for cost by being cognizant of and relying on various legal tools and strategies:
Certain countries, such as Canada and the United States, offer inventors a grace period that permits them to patent an invention even after publicly disclosing or commercializing it. This may allow you to begin commercializing a product without incurring the upfront patenting costs, so long as you proceed with patenting before the expiry of any applicable grace period. Keep in mind that many countries do not offer grace periods; some countries that do offer grace periods offer them only under extenuating circumstances (e.g., in Europe, for breach of trust); grace periods can vary in length, but generally are never longer than a year; and in some countries you must tell the patent office you are invoking the grace period and provide details of any prior disclosure in order to benefit from it (e.g., Mexico). The World Intellectual Property Organization publishes a list of various grace periods available worldwide.
You may wish to start the patent process with a provisional patent application to secure a filing date, instead of proceeding straight to a non-provisional application, which secures a filing date and serves as the basis for examination. This defers several thousand dollars in upfront filing fees at the cost of deferred patent examination and grant. Additionally, a provisional application may be drafted to be less detailed than a non-provisional application, thereby saving drafting costs in addition to filing costs. This introduces additional risks, which can be mitigated if you will only be pursuing patent protection in grace period countries and/or will be keeping your invention confidential until a non-provisional filing.
Commercialization without publication
You may be able to change or implement a commercialization strategy in which you commercialize without publishing your invention. For example, instead of shipping software to end users, you may keep your software a trade secret and allow users to access its functionality by offering it as a service (e.g., you may commercialize software by offering it as a cloud-based service). In some jurisdictions, this may allow you to commercialize your invention without prejudicing your patent rights. It is best to revisit patenting prior to the end of any grace periods for countries in which you wish to pursue patent protection.
Extensions of time
Many jurisdictions offer extensions of time during patent prosecution that allow you to spend hundreds of dollars to defer, by at least a few months, costs that may be an order of magnitude more. Furthermore, in response to the ongoing COVID-19 crisis, many patent offices worldwide are offering deadline extensions. For example, the Canadian IP Office has automatically extended patent prosecution deadlines falling between March 16, 2020 and May 18, 2020, to May 19, 2020, and has indicated it may further extend this period. Similar extensions are in place in other jurisdictions as well.
A crisis can serve as a good opportunity to review your patent and invention portfolio to determine whether drafting and filing applications for those inventions, and spending money on maintaining patents and patent applications, continue to make sense in a cost-benefit analysis. In the event you decide to cull applications from your portfolio, certain jurisdictions may allow you to reinstate your rights with a certain period of time from abandonment (e.g., one year).
Deferring fees usually involves incurring some risk. After all, a best practice is a best practice for a reason. However, the perfect should not be the enemy of the possible. It is critical, particularly when deciding to assume some risk and when different requirements in different jurisdictions are in play, to retain experienced counsel and receive business-oriented advice.