Five things to do and think about before filing your patent.

canstockphoto18076005Patents are powerful tools, but there are some very important things to do and think about before pursuing a patent to protect an invention. Here are my five top things to consider.

Keep the invention secret until you have filed an application for a patent. There is a substantial risk that telling others about the invention will invalidate the patent before you have even filed an application for the patent. It is a good idea to have a patent attorney prepare and file a provisional patent application. After the provisional patent application is filed, you can discuss your ideas after the provisional patent application is filed without invalidating the patent. A confidential disclosure of the invention to your solicitor or patent attorney will not invalidate your patent. A limited number of countries excuse disclosure of the invention (including Australia, the US and Canada) provided that the patent application is filed within a set time period. The set time period is in many, but not all, cases 12 months after disclosure. These “grace periods” should not be relied on because they generally reduce your options during prosecution of the patent.

Consider using non disclosure agreements if you want to disclose your invention. While non-disclosure agreements provide weaker protection than a patent application, they may prevent a person bound by the agreement from disclosing the invention to another person. Also, disclosing the invention to the person bound by the agreement will not invalidate the patent. Non-disclosure agreements may be useful if you want to discuss your ideas before filing a patent application.

Is a patent worthwhile? Generally, patents can be used strategically to your advantage. Some strategic uses include: increasing your chances of attracting money, gaining income by licensing your patent; offering a licence to settle a dispute; offer a license to apply pressure; creating a new industry standard by licensing your technology; exploiting the product protected by the patent and licence a second company to do the same; strategically control your suppliers; build a large patents portfolio to decrease the risk of being threatened with patent enforcement; and making yourself more attractive for acquisition, merger, IPO or JV. Some processes and methods may not be reverse engineered by examining their outputs. It may be better to keep these processes and methods secret than seek a patent that has a limited life span, generally 20 years after which the invention disclosed in the patent specification can be exploited by anybody. Other inventions can not be patented, for example a recipe. If a patent application is filed then no patent will result however the contents of the patent specification will be published revealing the detailed workings of the invention. In this case, a lot has been given away for no gain.

Is the invention new? If the invention is not new or is too similar to existing ideas or products, then a valid patent can not be issued for your invention. The patent office will examine the patent application to establish that the invention is new. Examination includes finding published documents about other similar inventions. Subsequently the patent office may object that the invention is not new or is obvious in light of the relevant published documents. Consequently, before filing a patent application you may wish to search for documents, particularly published patents, that disclose ideas similar or identical to the invention. One low cost option is for you to use a free online patent search tool. Generally, however, a professional search will provide a better indication of the originality of the invention. You may wish to perform a search after the filing of a provisional patent application to reduce delay.

Is the invention the right subject matter for a patent? Some inventions that can generally be patented include mechanical inventions, and electrical devices. Other inventions that cannot be patented include abstract ideas, a discovery without any useful application, a scheme or plan, scientific theories and fine arts. Still other inventions may have some patentable aspects depending on the country. For example, the patentability of software, business methods and methods of medical treatment vary between countries. Advice may be sought from your patent attorney.

For further information contact Justin Blows.
j.blows@phoenixip.com.au
+61 (0)410 013 089