13 June, 2016
Many companies depend on the IP portfolio of their company in which patents play an important role. Even a well-researched and careful attempt to file a patent can run into unforeseen mistakes. In other words, mistakes in a patent application can be ruinous to the company.
Below are five mistakes which can be avoided with respect to filing patent applications:
Not Using Non-Disclosure Agreements:
Imagine a world without an enforceable Non-Disclosure Agreement (NDA), where you cannot disclose a confidential piece of work. It would be very discouraging to disclose confidential information, with all the risk and loss of all the creative work being done.
How to avoid: When an inventor wishes to disclose his/her invention to an IP attorney/advisor to get advice on patentability of the invention, it is necessary that the inventor signs a one way NDA. By signing the one way NDA, the inventor can disclose the information to the other party and can enforce it if the information is disclosed to a third party.
However, when some information is revealed to another party under an NDA, and that party reveals it to the public in violation of the NDA before the filing date of an application based on the revealed information, that information is considered to be prior art. Some patent laws give inventors a certain time to file a patent application after such a violation occurs. If the application is filed within that period, the wrongfully disclosed invention does not count as prior art.
Not Searching for Prior Art:
Prior art is something existing in the public domain prior to the inventor’s invention. Prior art could be published patents, published pending applications and publically available non-patent literature. When the inventor submits the patent application to the patent office, the patent examiner conducts a patent search to evaluate the patentability of the invention.
How to avoid: When an inventor thinks of patenting his/her invention, the first and foremost thing which has to come to mind is searching for prior art. The inventor may himself conduct a prior art search using free databases or approach a patent agent/attorney to help him find the prior art references that are similar to his invention. Based on the prior art references, the inventor may decide on how the patent application can be structured.
Filing a Patent Application at the Wrong Time:
Generally inventors develop and take a product/service to market to see if the product/service is viable in the market and then think of applying for a patent.
How to avoid: Any disclosure, be it by the applicant or by others, before the filing date of the patent application will be considered as prior art. Therefore, the inventor must file a patent application and subsequently disclose the invention to the public. After filing the patent application, the inventor may determine the market for the product and then decide in which other countries to file the patent application. If the inventor wishes to file in other countries, then the inventor must file the patent application in those countries (or PCT application) within 12 months from date of first patent filing.
Not Taking Advantage of “Provisional” Applications:
At times, the invention may not have matured into a finished form or may be at an early stage. Or, the inventor may only have the idea but doesn’t have the means to implement. The inventor need not wait for the invention to mature or until the idea is implemented to file for a patent.
How to avoid: When the idea is in its nascent stage itself, the inventor may consider filing a provisional patent application. The inventor may disclose only the known details of the invention and does not have to submit claims in the provisional application. By filing the provisional application, the priority date is secured. Further, the inventor can claim a ‘patent pending’ status for the product/invention. Subsequently, a complete specification must be filed within twelve months from the date of the provisional application. The complete specification must include complete details of the invention and must have claims.
Filing a Poorly Drafted Patent Application:
In the hurry to file the patent application or due to the lack of knowledge of the patent system, inventors often submit patent applications that do not meet the requirements of law.
How to avoid: The patent application should explain the details on how each and every feature of the invention works in order to solve the underlying technical problem. The patent application should be presented in such a way that a person skilled in the art will be able to implement the invention by going through the description provided, with reasonable experimentation. The inventor may make use of drawings to elaborate on how the invention works. Further, the claims in the patent application should define the boundary of the invention and should be clear.
Conclusion:
When considering filing a patent application, it is better that the inventor is aware of patent law or engage a patent attorney to get an idea about understanding the law and the patent application filing process.
For further information, please contact:
Manisha Singh, Partner, LexOrbis
manisha@lexorbis.com
