(This article was written for AIB Business. The original article was published on April 28, 2016 and can be viewed here.)
Many entrepreneurs and inventors ignore the general rules of patent filing when commencing business operations and pitching to investors. What they don’t understand is that one rookie mistake or omission at the early stages of business development could leave your creations completely open to being repurposed, used or even stolen by other members of the public. These five tips can help you in protecting your idea and, ultimately, your business:
1. Do not make a public disclosure of your invention before you file a patent application
One of the most important things to be aware of when seeking to protect your idea by means of a patent, and one which newcomers to the patent system are often unaware, is that the details of your invention must not have been made publicly available (otherwise known as “publicly disclosed”) before you first file a patent application. This is because one of the key requirements for an invention to be patentable is that the invention is novel at the date a patent application is filed. As a result, if you have made a prior public disclosure of the details of your invention, then it is no longer novel and thus fails one of the primary tests for patentability.
A public disclosure can take many forms, such as publishing details online, on television or radio, oral disclosures, selling or offering the product for sale. If it is essential that the details of the invention are disclosed to another party, e.g. if outside expertise is required during the design and/or testing phase of product development, then such a disclosure can occur under the protection of a confidentiality agreement, which can be tailored to meet the needs of your particular circumstances.
2. Perform comprehensive searches before you seek patent protection
As briefly mentioned above, in order for an invention to be considered patentable – and therefore protectable – it must meet the basic requirements of novelty and be considered inventive at the date your patent application is filed. In order to make a determination on whether or not these criteria are met, it is necessary to be aware of the most relevant inventions, which existed prior to the creation of your own invention. It is therefore advisable, prior to filing a patent application, to undertake some basic patent searching in order to determine if the details of your invention are already known or perhaps obvious in light of some earlier similar disclosures. This is most effectively achieved through internet searches, both general and via specialist patent databases containing published patent specifications. Examples of patent specifications can be found on the Espacenet website, which is a freely accessible online patent database administered by the European Patent Office. Patent searches should preferably be supplemented with more general searches e.g. online and in industry specific publications or similar.
3. Conduct significant product development and/or testing prior to filing a patent application
In view of the above requirement to maintain secrecy before filing a patent application, there often arises a motivation to have a patent application filed as quickly as possible and thus often on the basis of a concept, so that the invention can be publicly disclosed and its commercial potential assessed. However, there is a risk in rushing to file a patent application before the details of the invention have been fully considered, tested or otherwise assessed in real world conditions. Often a concept appears fully formed on paper but, once a working prototype has been developed and tested, there may be significant technical changes or additions, which are required before the design is market ready. If these changes materially alter the composition and/or functionality of the invention then the hastily filed patent application may no longer adequately cover the modified version of the invention. This can lead to the final market-ready product being dangerously under protected, or may lead to a requirement for a subsequent patent application to be filed to cover the modified version, adding cost, time and effort to the process, while distracting from the core focus of the business. It is therefore important to balance the desire for an early patent filing with the benefits of conducting significant product development and/or testing prior to a patent filing.
4. Be strategic in selecting countries for patent filings
While it is natural to want to commercialise a new product in multiple global markets, and thus seek patent protection in all potential market territories, this is often not financially viable. Overextending your business, particularly in the early days of a new product, can result in severe financial pressure, especially when all of the other financial aspects of a new product launch are considered, such as manufacturing costs, marketing, branding, etc. It is therefore an essential strategic consideration to carefully choose your markets and establish detailed budgets, including Intellectual Property spend, for entering those markets.
Most businesses choose to initially file a patent application in their home country and, within one year of filing, any foreign patent applications must be filed. In practical terms this gives a business seven-eight months after filing to research the potential market for the invention. It is at the one-year stage that patent costs become more substantial and so it is critical that as much development and commercialisation of the invention as possible is carried out in those seven or eight months after filing, to allow an informed decision on seeking patent protection in other countries. It is often the case that the two-three largest markets account for up to 90% of sales, and so limiting patent protection to those markets can be a prudent way of establishing a monopoly in those core markets within reasonable budgetary constraints.
5. Stand on the shoulders of others
As any established and successful business knows, a key skill is focusing on your strengths and knowing your limitations, and to engage outside expertise as needed, rather that diverting significant time, effort and expense in trying to accomplish everything in-house. There are so many diverse aspects involved in running a modern business, and this can be particularly challenging to new businesses and SMEs, which often have limited resources at their disposal.
In order to effectively protect a new invention and, more importantly, make it a commercial success, there are many skills that must be brought to bear, and many pitfalls to be avoided. By engaging experts who have navigated these issues many times over, costly and time-consuming mistakes can be avoided, and the time and energy of the business can remain focussed its core competencies. This can apply to the financial, legal, technical and logistical considerations involved in commercialising a new product.
If you would like to learn more on how to protect your patents, contact Brian O’Neill, European Patent Attorney.