How to protect your invention with patents?
Write down everything and keep good records. The more details you have from the very start, the better off you will be when you need to describe your invention for patent application purposes. Your description must be detailed enough so that anyone trained in the field is able to reproduce your invention based solely based on your description. To that end, you may also need to be able to draw your invention.
Start by making sure the IP you are inventing doesn’t already exist. A quick Google search can give you an idea, but a more thorough Prior Art Search, performed by a patent attorney, checks all searchable literature, including inventions that are currently in the process of being filed.
If you have good reasons to believe your invention potentially qualifies for a patent, but do not have the funding to launch a full application yet, consider filing a provisional patent application to obtain "patent pending" status.
Own your business. If you allow your foreign business partner to register your IP, in many foreign countries, they become the “rights holder.” You need to register your own IP assets and registrations with the customs administration to block the import and export of infringing items.
· Know your partners. Make sure all potential foreign business partners are qualified and reliable. Include provisions in your contracts that require the use of original and unaltered products to prevent the partners’ registration of your IP.
· Ideas are not usually copied until they show potential to be successful in the market – and at this point, if someone else steals your idea, it may be too late. Make sure to maintain confidentiality when developing a new product by having people sign a non-disclosure agreement and take the necessary steps to ensure it is enforceable.
What Are Patents?
Patents are afforded to the inventor of a new, useful and non-obvious invention for a period of 20 years from the filing date of a patent application. Once obtained, the patent provides the right to exclude others from exploiting the invention during that period. Types of patents include:
1) Utility patents for new and useful processes, machines, articles of manufacture, or compositions of matter, or any new and useful improvements thereof;
2) Design patents for new, original, and ornamental designs for articles of manufacture; and
3) Plant patents for the discovery and asexual reproduction of any distinct and new variety of plants.
Typically the following can be protected by a utility Patent:
What is a Non-Provisional Application for a Patent?
A non-provisional application for a patent typically must include a specification, including a description and a claim or claims; drawings, when necessary; an oath or declaration; and the prescribed filing, search, and examination fees. If successful, at the end of the process you will be awarded a utility patent.
A PPA is a simplified and less costly alternative when you need to disclose your invention rapidly but are not in a position to file for a full patent application as of yet. A PPA costs $65 for a micro-entity, $130 for a small entity and $260 for a large company.
A provisional application establishes an early effective filing date in a patent application and permits the term “Patent Pending” to be applied in connection with the invention for 12 months. Provisional applications may not be filed for design inventions.
A provisional patent application will not, by itself, get you a patent. It only lets you preserve your rights while you decide whether to file for a patent.
What are the common mistakes relating to utility patents?
· Underestimating the importance of confidentiality and trade secrets, especially in the early stages. Patent protection typically takes some time. In the meantime, the diligent use of non-disclosure agreements and minimizing the sharing of information can help protect your valuable ideas.
· Writing a patent that is too narrow in scope.
A patent claim and specifications that are too narrow can be easily circumvented by competitors. Conversely a claim that is too wide may trigger chain law suits before you even start exploiting your invention.
· Disclosing all or part of your research prior to filing. Any prior disclosure, will count as prior art. Make sure that you file your patent application before disclosing your invention. This is something that often happens on crowd-funding platforms, so it is a good idea to get a qualified professional through the information you are planning to disclose.
· Ignoring the One Year “On Sale” Bar. In the United States, a patent application must be filed within one year of the first offer for sale or the first public disclosure of the invention.
What Are Design Patents?
Design right only applies to the shape and configuration of objects (how different parts of a design are arranged together). The design patent protects only the appearance of an article, but not its structural or functional features (eg a device in a packaging that allows for a more rapid opening). To be afforded protection, a design must:
· be new
· not be offensive
· not make use of protected emblems or flags
· not be an invention or how a product works
In the UK Design right automatically protects your design for 10 years after the design was first sold or 15 years after it was created - whichever is earliest.
In the US, a design patent has a term of 14 years from grant.
While copyright may protect artistic or literary work incorporated within the finished product, Design rights exist independently of copyright.
How Do I Apply for a Patent?
A useful starting point is to find out what can and cannot be patented. Prior searches may be conducted on the U.S Patent Office website. But to get a US patent you will need to go through a complicated application process. This is why most inventors employ the services of registered patent attorneys or patent agents from the start. Only attorneys and agents recognized by the USPTO for this practice are permitted to represent inventors before the USPTO for the purpose of applying for a patent.
The Pro Bono Program encourages the USPTO to support intellectual property law associations across the country in the establishment of pro bono programs for inventors and small businesses. The eligibility requirements vary for each program but will most of the time entail a revenue threshold.
But remember, the federal or state protections you may obtain in the US only extend throughout the United States, and does not confer protection in other countries. To secure full rights to exploit your IP in another country, you must apply for the relevant IP in that country (or via multiple filing treaty). Whether a mark can be registered in a particular country, or whether an invention is eligible for a patent, or how long you will be able to enjoy exclusive rights over those once published, will depend on the law of that country.
The adoption by the US in 2011 of the first-to-file system for patent applications (as opposed to the first to publish method) helped close part of the gap that existed between the US system and the processes in force throughout Europe. Similarly, multiple-country filings may now be envisioned for trademarks (via the Madrid Protocol) and patents (through the Patent Cooperation Treaty).
Yet, the process of harmonization remains a slow one, and major discrepancies between the level of protection afforded by IP registration and the conditions under which applications are reviewed still exist across countries.
In addition, obtaining multiple registrations in several countries does come at cost (around $80,000 should you elect to register your mark in all 143 member-states of the Madrid Protocol)
Navigating through concurrent filings, local requirements, and deciding on the extent of the protection that should be sought is something that requires both experience and know-how. Accordingly, the first step in determining whether IP protection would advance the interest of your company is to secure the services of specialized legal counsel locally.