How To Patent
The first step is to decide whether you want to patent your idea at all. You always have three options:
Keep it secret
There are pros and cons associated with each of these. Patents cost money, result in your idea being published after 18 months (under certain conditions), but keep your competitors at bay by providing you with a legal monopoly for up to 20 years, which you can use as leverage.
It might be better for you to keep the idea as a trade secret, especially if your concept is something like a chemical process, which wouldn’t be easy for someone to reverse engineer.
You might, as a third, decide to publish your idea in a publication or trade journal. This is called “novelty destruction” as you are effectively putting the information into the public domain, thereby destroying the newness thereof, which precludes anyone (including you) from obtaining a patent for the process or product.
Usually though, it’s a combination of these. File a patent for the product, publish your results (if contained in the patent), and keep aspects of the manufacturing process secret. There are many ways to implement an IP strategy, but as long as you ask yourself which of these options you want to pursue, you’ll be OK. Even some of the largest, most IP-savvy companies in the world use these questions when someone in the company comes up with a new innovation.
Patenting is essentially a multi-step process, with the first two steps being spaced 12 months apart.
It might be better to file a provisional patent application adequately describing your invention. This is done so that you may have the earliest possible date from that to claim rights to your intellectual creation – similar to an ‘option’ to protect your invention by way of a final patent, without losing any rights in the interim period. You can do this yourself or if you have the money available, I would always suggest that you hire a patent lawyer to do the hard work for you.
The second step is to file a complete patent application within 12 months of filing the provisional application – in some countries this can only be done by a registered patent lawyer, but most countries allow you to do this yourself. Even if you can do this in your own country, this is a crucial step (much like the filing of the provisional patent application) and it is always worth engaging a specialist patent lawyer to prepare the complete patent specification. He or she will also guide you through the examination process and provide valuable comments on how to get your patent granted as well as direct you regarding the filing of overseas patent applications.
Priority Dates – establishing your first rights
The complete patent application will claim a first (or ‘priority’) date from your provisional application. In other words, the rights to your invention that you are protecting will date back to the filing date of your provisional application (also called the ‘priority date’) – you do not lose any rights in the interim 12-month period. That is another reason why your provisional patent application must be as complete as possible.
Even when you eventually file patent applications in foreign countries, you do not lose any rights in the interim period if you stick to all the deadlines, as most countries are signatories to what’s called the ‘Paris Convention’. This is an international convention that was instituted in the 19th century to provide reciprocal rights to inventors – this means that your rights as an inventor and patent applicant are protected (or held open) for 12 months in most countries of the world. Visit the World Intellectual Property Organization (WIPO) website to see which countries are part of the Paris Convention and other important treaties, such as the Patent Cooperation Treaty (more on this later).
By the time you need to file a “complete” application in 12 months’ time, you will have a much better indication of whether your creation is going to be a success or not, so you would most likely have a clearer indication of whether you should incur these costs or not. It’s worth bearing in mind, however, that once you have disclosed your idea to the public (AFTER filing the provisional application), the clock starts ticking, and you only have the 12-month period to finalize you invention and file the complete application. The provisional patent application only lasts 12 months and if it lapses, it lapses. If you haven’t filed a complete application before your provisional application has lapsed, then you’re done for as regards the protection for your invention. Think of it this way: if you placed your invention on the market without patent protection in place, then you can never get patent protection for it (in most countries of the world, that’s how it works). So if you file a provisional patent application, then make your invention known to the world, then you will be without any protection once your provisional application has lapsed. To keep your protection going, you need to hammer another stake into the ground in the form of the complete application. But the handy thing is that the complete application can claim a “priority date” from your provisional application, effectively stretching your 20-year monopoly to 21 years.
Sticking to timelines
But once your invention is in the public domain, you can’t file a complete application validly claiming priority from the earlier provisional application if it is filed later than 12 months from the date of filing the provisional application – you must thus use your 12-month priority period wisely and do as much market research as possible and find the right funders, developers, suppliers, and distributors to make a success of the product. If there’s a gap between the provisional and the complete then (with very few exceptions), you will have lost the rights to the patent.
Of course, if you had kept the invention secret and you come to the 12 month deadline, then you can always re-file the provisional application, as nobody would have known what was contained in your provisional patent application (they’re kept secret by the Patent Office and if they lapse after 12 months then they remain secret, EXCEPT if you filed a complete application).
Alternatively, you could also start manufacturing the product yourself, should this be an option and also depending on the complexity of the invention. Take a look at chapter 20 for more ideas on how to commercialize your invention during this time.
Why this multi-step approach? Can’t I just file a complete application from the start and not incur the expense of filing a provisional patent application?
Complete applications are more expensive to file than provisional applications and it is generally not possible to add additional matter to a complete application once it has been filed. The reason for this two-step approach is therefore to give you time to (cost-effectively) determine the market potential of your invention with interim protection and without losing any rights, as well as to give you time to refine your invention into its ‘perfected’ form. The filing of a provisional patent application is a sensible, cost-effective way of testing the waters. If your invention isn’t a winner then you’ve only incurred the relatively modest costs of a provisional application, and not the greater cost of a complete application, which is quite expensive to draft and file in the first instance.
You should also bear in mind that any modifications that you make to the invention as contained in the provisional specification must be kept secret until those particular modifications have been captured in (i) a second provisional patent application or (ii) the eventual complete patent application that must be filed with 12 months of the filing date of the earliest patent application describing your invention.
In other words, if you haven’t covered an aspect of your invention in a patent application of some sorts, then you cannot disclose that aspect of the invention without irrevocably losing the rights to your invention in terms of the patent laws of most countries, IF you haven’t filed for protection before disclosing that aspect. This is another reason why you must make sure that your provisional patent application(s) covers every aspect of your invention. When making developments to your invention, you should file further provisional patent applications before disclosing such improvements to the public.
Inventors are frequently under the misapprehension that once they have filed a provisional patent application, they have blanket protection for any modification or change to their invention – this is not the case and you must either keep such changes or modifications secret until you tie them up in the eventual complete application, or until you have filed a further provisional patent application in the 12 month period for the improvements or modifications.
This point cannot be stressed enough, and is frequently the reason why individuals lose rights to the most notable aspects of their invention once they have progressed passed the prototype stage, where they’ve received some input on the product and start making significant changes prior to bringing it to market. Always protect first, then disclose.
This cannot be emphasized strongly enough, and is the reason that pharmaceutical companies file patent applications for every single improvement that their Research departments come up with – sometimes they file up to 20 or more provisional patent applications in the 12 month grace period, that they then tie up in a single complete application. Although extreme, this is the correct way of going about things, as you are allowed to file as many provisional applications as required relating to improvements to your invention in the 12 month period, provided you then tie them all up in the eventual complete application(s).
Can I still be sued if I have a patent for my invention?
Many innovators also think that if they file a patent for their invention, then they cannot be sued for patent infringement (i.e. for infringing someone else’s patent). This is not the case, as discussed previously. Your patent only allows you to stop someone else from making your patent. It does not allow or permit you to make or do as you please, as there might be an earlier-filed patent by someone else that could stop you from making all or part of your apparatus or implementing your process or method.
Let’s say, for example, that your invention is a new mousetrap that requires a particular type of spring to make it work. If that novel type of spring has been patented by someone else then you have three choices:
Purchase the springs from the original patentee/manufacturer;
If you want to make the springs as an integral part of your mousetrap, then you will need to obtain a license from the original patent holder.
Eliminate the spring and come up with another design.
The reason for the first two points above is that the patent holder is entitled to his profits from his invention. If you’ve bought it from them, then they can’t charge you another license fee as well – they have exhausted their IP rights once you’ve bought it from them.
As you develop your invention, your patent portfolio must keep abreast as well. This is another reason to be careful and conscientious when drafting your patent specification and to include as many options as possible at the outset.
Must you file a complete patent application within the 12-month deadline?
Well, it’s important to realize that a provisional patent application does not provide you with an enforceable right – it is merely a cost-effective procedure that allows you to test the market for 12 months without destroying the novelty of your invention. You only have an enforceable right in a country once you have filed a complete patent application for the final form of your invention and it has been granted by the Patent Office in that country. In other words, you cannot litigate, threaten, or take someone to court based on a provisional patent application – that is not its job. A provisional application only allows you to disclose your invention without losing the rights thereto. It is the most important step you can take when seeking to protect your invention in just about any country in the world.
Should a copycat start copying your idea while your application is still pending, it is possible to expedite the granting of your patent at the Patent Offices of most countries of the world.
Once granted, annual maintenance fees must then be paid to keep the patent in force. Failing that, the patent lapses and you lose your rights to the invention. Renewal fees usually cost a few hundred dollars per year per country (except for the USA, where they’re payable in batches every few years).
What does ‘Patent Pending’ on articles refer to?
This refers to a provisional patent application, or a complete patent application that has not yet proceeded to grant. However, once an application has been lodged for patent protection, all such articles made must reflect the patent application number and/or the eventual granted patent number(s) thereupon. You’ll get the patent number sent to you by the Patent Office within a few weeks of lodging the patent application. It is important to mark the products with the patent/application numbers, as it is required in terms of the patent laws of most countries if you want to be able to claim damages in the case of infringement. In other words, putting the patent number on your product serves as notice to potential infringers that you have applied for patent protection – they will thus not be able to argue that they didn’t know they were infringing a patent. This is why it is important to put the correct patent or patent application number on the article.
Can I file my own provisional patent application?
As I mentioned earlier, the drafting of a patent specification is a skill and must be done in such a way that competitors can’t merely substitute a trifling part of your invention and circumvent your patent protection. Although this book is a useful assistant, I would always advise that, if financially possible, a patent specification be drawn up by a qualified patent lawyer. While your specification should provide you with patent protection that is as broad as possible, it shouldn’t be composed in such a way as to read on to prior inventions in the field of your invention.
Also, by drafting your patent specification yourself you run the risk of not fully describing your invention, a fatal omission.
What does provisional patent protection cost?
Instructing a patent lawyer to prepare and file a provisional patent application will typically cost you between $3500 and $7000, depending on the complexity of the invention, which patent attorneys you get to help you, and which country you live in. But sometimes this can be much higher for really complex electronic, software, business method, chemical, or biotechnological inventions. Your patent attorney will usually be quite upfront with the charges so that you know exactly what you’re in for. The more complex the invention (such as biotechnological and software/IT inventions), the more charges are incurred in drafting the specification. Complete patent applications and international (Patent Cooperation Treaty applications, described below) can be even more expensive, so it is important you get a clear indication from your patent attorney what sort of ball-park figures you’ll be looking at. While this may sound expensive, you have to bear in mind that you are in effect buying a 20 year monopoly for your invention, one in which you can keep your competitors at bay and ensure that you have the market to yourself. Complete applications and international patent applications also undergo examination (a provisional application is not examined, unless you specifically request this), and for each phase of the examination more fees are payable, which can easily double the cost of your patent application. For this reason, it’s important to work closely with your patent attorney and give him/her as much useful input into how your patent differs from the prior documents that the patent examiners will inevitably find during their searches.
Where do I go for international patent protection?
It is important to note that patents are territorial rights – you can only enforce a patent in whichever countries you have applied for protection, dating back to your original provisional patent application. There is no such thing as a worldwide patent. This means that you must file patent applications in each country in which you wish to exploit your invention. Through their networks of foreign patent agents, patent lawyers can provide you with a one-stop foreign patent portfolio that covers your countries of interest. There are also new services such as inovia.com, which allow you to file foreign applications for somewhat cheaper than would usually be the case. But make sure you tell your patent attorney that you’re cost sensitive and that you don’t expect them to use the most high-powered or expensive overseas patent attorneys. You could literally save thousands of dollars over the lifetime of your patents portfolio by doing this.
A few countries are not members of certain international treaties, such as the Paris Convention mentioned above; you should consult a patent lawyer at the time of filing your provisional application if you know that there will be a few small countries in which you’ll require protection down the line. A list of these countries is available on request from patent lawyers or on the WIPO website.
I’ve heard that patents are time-critical – what does this mean?
You only have 12 months available in which to file a complete patent application based on your provisional application. It’s important that you contact a patent lawyer within 9 to 10 months or so of filing your provisional application to give them sufficient time to draft and prepare a complete patent application for your invention, should you wish to proceed. Failure to file applications within the specified times will most likely result in your patent rights being forfeited. Of course, if you have in the meantime made your invention public, you will be faced with no recourse against copiers if you did not file a complete application and prosecute it to grant.
Can any of the deadlines be extended?
Generally no, so stick to your timelines. There are a few countries such as Canada that allow for delayed filing of PCT cases (see below) in certain cases, but never rely on this. You do not want to lose the rights to your invention because you missed a deadline – that’s an expensive and entirely avoidable mistake. Very few, if any, of the patent deadlines can be extended for local or foreign patents. Patents are date-sensitive, and you as a patentee may inadvertently forfeit your patent rights if you miss any of the patent deadlines.
What happens to my patent application if I miss a patent deadline?
Your patent rights will most likely be lost if you miss a patent deadline. Therefore, once you see that there is a market for your product and you wish to continue with the patenting process locally and abroad, it’s advisable to hire the services of a patent lawyer. You must also provide the patent lawyer with a list of countries in which you want patent protection. Best practice is to contact your patent attorney within 9 or 10 months from the date of filing of your provisional patent application to allow the patent lawyer sufficient time to draft the complete patent specification and to prepare the patent documentation and patent translations required for the Patent Offices of each such country.
If it all goes wrong and you do miss a deadline, it is possible in certain cases to file documentation with the Patent Offices or courts of certain countries to have your patent application reinstated, especially if the lapsing of the patent or pending patent application was inadvertent. If you have missed a deadline due to an error or misunderstanding on your part, phone your local Patent Office or go and see a patent lawyer immediately to see whether any restorative steps can be taken to get your patent application back on track.
Why should I file a patent at all?
I was hoping that you wouldn’t ask this, this far into the book, but in case you’re not convinced by any of my other arguments, consider this: someone else independently may come up with your idea and can then capture your intended market. However, if you have filed an earlier patent application that proceeds to grant, you can stop your competitors from doing so. Even if a competitor starts manufacturing an invention similar to yours between the dates of filing the provisional and complete application, you will still be able to stop them. You don’t lose any rights in the 12-month period, provided you claim priority from your earlier (provisional) application when filing a complete application. In addition, patents serve as strategic business tools and may be sold or licensed for a royalty income (of which a bit more, later in the book).
What do I need to include in a patent specification?
This is discussed extensively in the bonus chapter that you can download from carelsmit.com. In a nutshell, you need to provide a full, detailed description of the invention. It’s crucial that you include as much detail in the application as possible, to ensure that all embodiments and features of the invention are protected. Also, all possible technical alternatives should be canvassed in the provisional patent specification. You should also include drawings of your invention (if the invention can be represented graphically), together with a description of the functions your product performs and the advantages of your invention. Make sure you illustrate every single part of the invention and describe each part carefully, including all alternatives, and how each part interacts with other parts.
If you have a process- or method-type innovation, make sure you describe each step carefully and provide drawings in the form of a flow sheet or diagram which illustrates each step of the process or method.
Do I have to provide a working model?
No – the Patent Office of your country does not require you to submit any models or prototypes. It’s worth bearing in mind, however, that your description in the patent specification (when read together with the drawings) must provide a so-called ‘enabling disclosure’ of the invention – in other words, someone of ordinary skill in the field of the invention must be able to read your specification and make the invention work without undue experimentation. See the paragraphs dealing with ‘Can I patent an idea?’ in the previous chapter to get a further understanding of this matter.
Will my invention be safe?
When discussing your invention with any person other than a patent lawyer or a Patent Office official, always insist on having such other person sign a non-disclosure agreement. A patent lawyer can provide you with such an agreement should this be required. In addition, following submission of your patent application at your Patent Office, it is locked in a safe and kept secret, which ensures that third parties will not be able to read or gain insights into your invention until it is published and made public by the Patent Office. It only becomes “open to public inspection” when 18 months has elapsed from the filing date of the provisional application AND if you filed a complete application claiming priority from the provisional application. If you decide to let your provisional application die without filing a complete application, then it will remain unopened and no one will know w