Patent Advice You Can Use Immediately
The most useful, yet boring, patent advice you will read. Ever.
Patenting is essentially a multi-step process, with the first two steps being spaced 12 months apart.
The first step is 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. Of course I would, I’m a patent attorney myself after all.
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
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 do you not lose any rights in the interim period, 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 that time you will know whether your invention 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. Bear in mind, however, that once your application has been disclosed, the clock starts ticking, and you only have the 12-month period to finalize you invention and file the complete application. 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 – so you must 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.
Alternatively, you could also start manufacturing the product yourself, should this be an option and also depending on the complexity of the invention. We’ll discuss this in a later video. But for now, let’s just look at the procedure involved when filing patents and growing your patent portfolio.
Why this multi-step approach? Can’t I just file a complete application from the beginning 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. Thus, the filing of a provisional patent application is a sensible, cost-effective way of testing the waters.
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 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. 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.
Inventors 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. 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.
As you develop your invention, your patent portfolio must keep abreast as well, so you will keep on patenting new inventions. This is another reason to be careful and conscientious when drafting your patent specification and to include as many options as possible.
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 without destroying the novelty of you 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 task 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 any country in the world.
However, should your competitors start copying your invention 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.
Why can’t I just file a complete application in the first instance?
This can certainly be done, but it is likely to be an expensive first step and, more importantly, you can’t easily add new matter to a complete application once it has been filed.
This means that any improvements you make to your invention cannot validly be included in the complete patent specification.
Rather, take the time and effort to file a good provisional patent application, see what your clients prefer, and file the complete application later, once your invention is in it ‘perfected’ form (bearing in mind the 12 month deadline, detailed above, though).
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 application has been made for patent protection, all such articles made must reflect the patent application number and/or the eventual granted patent number(s) thereupon.
It is important to mark the products with the patent 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, an often fatal omission.
What does provisional patent protection cost?
This is one of the first questions inventors have, and it is, indeed, a valid question. 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 and which patent attorneys you get to help you.
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.
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.
You can do this yourself by contacting patent attorneys in the various countries you’re interested in, but it’s best to go through patent attorneys. 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.
A few other 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. But if you have missed a deadline due to an error or misunderstanding on your part, 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 course, 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.
But, if you had filed an earlier patent application that eventually proceeds to grant, you can stop your competitors from doing so.
In other words, if you have a granted patent, if it was filed at the patent office before the other person marketed or sold their invention, then you have the earliest date. There’s an old legal saying: First in time, first in right.
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.
Most importantly though, patents serve as strategic business tools and may be sold or licensed for a royalty income.
What do I need to include in a patent specification?
This is discussed extensively in the workbook that I’ve given you. In a nutshell, you need to provide a full, detailed description of the invention. It’s preferable to 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. 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.
Do I have to provide a working model?
I’ve mentioned this before. No, you don’t need to provide a working model – 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.
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 if this is 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 has become open to public inspection.
This only happens 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 what you had filed (apart from the title of the invention and your name, which are published in the patent journal upon filing.
If, however, you have disclosed your invention to the public then it is no longer secret and you will have lost any patent rights if you did not file the complete application. Once the complete application has become open to public inspection, the provisional application also does, meaning that you will have competitors looking to see if you missed any elements of your invention, even when drafting the provisional patent application, so it’s important you get the provisional patent application in the best form possible from the beginning.
Be careful, conscientious, and clear when drafting your patent specification or when instructing your patent attorney, or when reviewing a patent specification that your patent attorney has sent you for review before filing. Do not introduce ambiguities into the document, and make sure you have used the same term for the same element all the time (in other words, be consistent). Crucially, don’t try to hide anything.
Once you’ve filed your application, you’re free to disclose your invention to potential investors or business partners, or you may decide to commercialize the invention yourself.
A word of warning – as stated before, only disclose your invention to the extent that it is covered in your patent application. If you disclose improvements or modifications to your invention that you have not described in your provisional patent application, then you will forfeit your rights to such improvements forever.
In other words, if what you are showing to people is not what you have covered in your application, then you will have to file another application covering such improvements before showing the improved version to people.
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).
In filing a patent application for your invention, you have also gained a foothold in your market, and you should make the most of this in your negotiations with investors and the like. Remember, once you have a granted patent for your invention (after having lodged a complete application), you have a 20-year monopoly in which you can stop others from copying your invention.
Patents allow you to stop others from making, using, importing into the county, of selling your protected invention.
Keep in mind, however, that you cannot take any legal action based only on your provisional patent applic