Lesson 1: Patenting Process Pre-filing Steps

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While it is advisable to engage a professional to help file the patent application certain preparatory steps can help reduce costs and possibly strengthen the quality of the patent that is ultimately issued. This includes doing your homework before you start the patent filing process, which in this module is referred to as pre-filing steps.

PRE-FILING STEPS

  1. Write out your idea in detail

    It is important to write a detailed description of your idea. Describe how the invention works and try to explain what makes your invention new and unique. Draft your description as accurately and completely as possible, such that it reads like a technical definition of your invention. This process will not only allow you to have a stronger patent, it will help focus your prior art search (as described below)

  2. Check if someone else has already filed a patent over your idea or has disclosed the idea in some publication

    Since novelty is a pre-requisite to a patent being filed, someone else can’t have come up with the idea first. To find out whether you are in fact the first person to have had the idea, you should start by looking at searchable patent databases like the Google Patents database to search for existing patents that anticipate your invention. You should also look at technical books and other relevant publications to see if someone else has already come up with your idea and shared it with the public.

    If a patent has already been filed that anticipates your invention or if there are other public materials that describe key aspects of your invention, then you may not be able to secure a patent. If you discover this early in the process then you will save yourself a lot of time and money.

    It is important to note that doing a prior art search is not mandatory to filing your patent but if you conduct one and you find something that is relevant to your invention, you may have to disclose its existence when filing for a patent. For example, in the US, a failure to disclose could have adverse consequences for your patent (as we will discuss further below)

  3. Think about your business plan

    Figure out what your target markets are and determine which ones are the most vital for you. This consideration can guide where you eventually file for patent protection.

    Ask yourself the following questions:

    • Do you want to manufacture in that geographic market? and/or
    • Is that a market in which you hope to distribute products?
    • Will you have many competitors in that market?

    However, merely because you may want to distribute products in a particular market, does not mean that you should automatically consider filing a patent in that jurisdiction because patent filings are costly.

    And so a better way to approach the issue is for you to consider the following:

    • How much revenue will you derive from selling the product in that market?
    • Will you have the resources to enforce your patent in that market?

    Think now and for the future. If the target market is a small market or has a weak IP enforcement regime, you may want to forego the time and money required to file a patent in that jurisdiction and determine if other forms of protection might be available to help you achieve the same or similar goals. Or else, you may have to be prepared to address the consequences of not having the requisite IP protection in that jurisdiction.

    In other words do a cost benefit analysis. Consider the potential for revenues in that market and the nature and the strength of the judicial system and its enforcement mechanisms versus the cost of filing, maintaining and enforcing the patent in that jurisdiction.

  4. Additional considerations for drafting your patent

    For example, your idea may apply to areas outside of your core business and hence you may want to talk about your invention in broader terms to be able to generate revenue from licensing it to someone who doesn’t compete with you but who wants to practice the invention in a different type of business.

    Also, if you think about how someone could work around your patent, you and your lawyer can draft the claims in a way that makes it harder for someone to design a product that avoids infringing on your patents.
    While having a patent that has the broadest scope is the most advantageous in terms of trying to assert that someone is infringing on your patents, the downside is that really broad patent claims may be invalid. So, although the broader your patent coverage, the harder it will be for a competitor to work around your invention, your patent may be more susceptible to challenges.

    The broader the patent, the more likely it is to have been anticipated by the prior art. In other words, if you try to claim protection over too much, you run the risk that someone else might have come up with something that you are trying protect before you came up with it. This may render your entire patent or portions of it invalid.
    These co-inventors may have rights in respect of the patent (unless they have been assigned under contract) but, nonetheless, the identity of all inventors should be listed in the patent application).

    A failure to disclose all of them might result in your patent being invalidated in some countries.
Last modified: Monday, 25 September 2017, 2:37 PM