Three easy ways to lose your patent rights

Destroying your chance to patent an invention is easy. Here are several traps and how to avoid them.

The trap of early disclosure. Every couple of weeks or so, I receive an enquiry from a business owner with an invention they wish to protect with a patent. We have a very pleasant conversation about how effective the invention is. Then I am unexpectedly deflated by their revelation that their invention is selling well.

Disclosing the invention before filing a patent application restricts, and in most cases destroys, your chance to patent the invention. Disclosing your invention generally includes, for example:

  • telling others about the invention
  • selling, or offering to sell the invention
  • providing gifts or samples of the invention

Trap

The best way to avoid this trap is by filing a patent application before you progress too far. Selling or disclosing your invention after filing a provisional patent application will not destroy your chances of a patent being granted to you.

If you wish to speak to a person about your invention before patenting your invention, another option is to have the person sign a non-disclosure agreement, which is also known as a confidentiality agreement. Passing on information which is covered by the non-disclosure agreement to the person will not destroy your chance to patent the invention. Non-disclosure agreements, however, have weaknesses. For example, how do you prove that leaked confidential information was leaked by a party bound by a non-disclosure agreement? In my view, it is generally better to either file a patent application or keep the information secret than rely on a nondisclosure agreement.

The trap of poor patent drafting. Drafting a specification for a patent application requires great care and consideration. A provisional patent specification, for example, is the foundation for the entire patent process. Saving money with poor drafting is false economy.

That is why the law stipulates that only qualified patent attorneys can professionally draft a patent specification in Australia. Drafting a quality patent application which survives rigorous patent office examination is intellectually challenging even for a patent attorney with years of experience.

Patent applications are not just rubber stamped. The patent office is actively looking for reasons not to grant a patent application. A poorly drafted patent specification is less likely to survive examination and any aggressive legal challenge by a team of highly motivated patented attorneys, technical experts, and lawyers.

I have been asked if I can prepare a very cheap provisional patent application. This can only be done by taking short cuts that reduce specification quality. Alternatively, I am asked if it is possible to self-draft a provisional patent specification. I assume that the requestor wants a sense of security that they have a patent application. This sense of security is false and potentially dangerous. If the requestor discloses the invention during the life of the provisional patent application and the provisional is found to be consequently invalid then patent rights may be lost. The amount saved is a tiny fraction of that lost by reduced drafting costs.

I have found that a well drafted patent application attracts significantly less objections from patent examiners. The amount saved during examination then generally greatly exceeds the amount saved by cheap drafting. Spending money for a well drafted patent specification actually saves money.

The trap of trying to patent an old idea. An invention is only patentable if it is new. With over 100 million published patent documents, it is likely that one of them discloses something similar to your invention. It is, in fact, relatively easy to inadvertently try to protect a new invention with language that encompasses an old idea. When this is discovered it is necessary to narrow the scope of the language used. Any amendments must be well supported by the disclosure in your patent specification. If your proposed amendment is not supported then it cannot be made and you will be stuck with the language that encompasses the old idea destroying your chance to patent the invention.

Prior knowledge of a document disclosing a similar idea generally results in a superior draft that gives the client a better outcome.

It is prudent to conduct a search of the patent and other literature before drafting the patent specification, so that language of appropriate scope can be used at the outset to avoid destroying your chance to patent the invention.

For further information contact:
Justin Blows
Phoenix Intellectual Property
j.blows@phoenixip.com.au