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How To Patent

The first step is to decide whether you want to patent your idea at all. You always have three options:

  1. Patent It

  2. Keep it secret

  3. Publish It

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.

Patent Steps

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:

  1. Purchase the springs from the original patentee/manufacturer;

  2. 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.

  3. 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.