Every year the number of patent applications received at patent offices globally increase by a significant amount. Around 275,900 PCT international applications were filed in 2020, up 4% on 2019 despite the global pandemic, maintaining an upward trend since 2010. China has been leading the race in patent filing in the last 5 years. However, despite so many filings in China, recently many patent applications (around 400,00) have been marked as irregular and have been instructed to be withdrawn. Patent filing is a fairly complicated ordeal, and any slightest negligence may result in rejection or abandonment of the patent application. We discuss some of the best practices that must be followed while filing a patent.
Evaluating the Novelty of the Invention before Filing
Novelty identification is the most important step before filing a patent application. As the time and effort is precious, one will tend to lose significant amount of these in case at a later stage it is found the invention/idea is not novel. Any monetary expenses spent during patenting process may also get wasted if one does not identify the invention’s novelty during the initiation itself. A novelty search by searching experts is recommended to evaluate the novelty of the invention which also helps in drafting the claims of the patent and identifying any design around. The novelty search also helps in upfront preparation for Office Responses during examination and prosecution process.
Technology Valuation and Market Research Before Patent Filing
Patent is an expensive investment that demands many types of monetary inputs during patent prosecution and even after the grant of patent such as maintenance fee etc. Since patent provides an exclusive right only in the country where one applies for patent, it becomes of utmost importance that one chooses the countries smartly for patent filing. After all the motive behind taking a patent is monetary gains, either by licensing (or selling) it out or self-manufacturing a product based on the invention; it is a smart move to understand and identify the target market where one would want to sell products based on the invention. Accordingly, a technology valuation and market research is recommended especially for individual inventors or SMEs that have strict budget.
Executing A Confidentiality Disclosure Agreement (CDA) While Disclosing the Invention To Third Parties
Executing a CDA (confidentiality disclosure agreement) nowadays is a standard practice among law firms and patent practitioners. However, some first-time inventors miss to have it executed before disclosing their inventions/ideas to some third party. It is risky and may cost someone hugely to the point of losing exclusive rights over the invention and their intellectual property. It is therefore highly recommended to have a CDA executed with every party whom the invention/idea is being disclosed to. Also, it is a good practice to take early as possible prior right over the invention by earliest filing of provisional (or non-provisional) applications before disclosing it to someone else.
Taking Provisional Application Route While Filing a Patent
Starting with a provisional patent application as a way to initiate the patent process is preferable because they are cheaper to prepare (because there are no formal requirements) and the filing fee due to the United States Patent Office at the time of filing is only $ 80 for micro entity and $160 for small entities (i.e., individuals, universities and companies with 500 or fewer employees), which saves you several hundreds of dollars compared to the filing fees for a non-provisional patent application. Apart from that, the provisional application provides exclusive right over an invention as it provides earliest prior right; and a 1 year of grace period, for filing a non-provisional final application, in which one may also work for finalizing the invention.
Evaluating Freedom-To-Operate for Your Invention Before Filing the Patent
The ultimate aim of having a patent is to monetize it, either by manufacturing product(s) based on the invention protected by patent or by licensing the patent etc. In both the cases, before launching a product, a freedom to operate (FTO) study must be performed, since merely having a patent doesn’t guarantee a safe passage for launching a product. There might be many patent owners out there who have patents for individual components of your invention. Such patents also pose an infringement threat for the product. So, it is wise to have the FTO evaluated, especially when you are an SME or individual who has relatively lower investment capital than corporates who file many non-profitable patents each year just to strengthen their patent portfolio.
Be Attentive and Avoid Missing Deadlines
Always give thorough attention to all deadlines on the application form. Make sure to adhere to all the important deadlines such as office action responses, fee schedule etc., and be attentive while dealing with the examiner. It helps you stay in good books of the examiner, and he/she will help you patiently during the prosecution stage to ensure grant of your invention if it is truly novel. Generally, the deadlines can be extended by paying extra charges.
Try To Be Broad as Possible While Drafting the Claims
Claims are the essence of any patent as claims describe the scope of the invention. Owner gets exclusive right for the invention only on the basis of what has been described in the claims. It is particularly important that claims must be drafted properly. Claims must not be too narrow that the patent only covers the owner’s intended product and loses its commercial ability to be licensed (or sold) out; and neither should claims be too broad so that many office actions need to be handled during prosecution as each office action response is associated with some fee. Accordingly, it is recommended not to narrow down the claims too much just to ensure patent grant, especially for individual inventors or SMEs since they lack funds to manufacture products on their own and maintain a patent that has low licensing-out ability.
Stack Claims and Include Independent as Well as Dependent Claims
Any language is not 100% perfect and words are subject to interpretation, so the more claims in your patent, the better. An independent claim may be interpreted narrowly, making it easier for the competition to avoid infringement. When the same independent claim is written in another way, it could be interpreted broadly and keep the competition at a distance. It is wise to have numerous claims by defining the invention in different ways using several independent claims, and dependent claims, which refer to and incorporate the limitations of other claims.
Employment Agreements in Case of Ownership of Patents
Ownership interests in inventions and patents can depend on a number of factors, such as the terms of any employment agreements, if any, whether individuals have executed any assignment agreements or have any obligations to do so. An agreement must stay in place when the inventor(s) are your employees to avoid any conflicts in future. Consultation with a patent attorney or agent is recommended for all ownership questions.
Consult a Patent Expert
Although a patent can be filed without any third-party consultation, as the patent offices do provide necessary support wherever possible during the patenting process, it is still recommended to hire an expert (a patent agent or a patent attorney) as they will help you right from the Patent filing process till the patent is granted and maybe later as well if you decide to sue someone who is using your invention without your permission. A patent attorney with good knowledge of the patent law, rules and Office practices and procedures will help you make the right decisions to protect your invention correctly.
Patents or other intellectual property rights are hard earned assets, and it is of utmost importance that returns must be optimized from these. Since you never know when a market governing idea will strike you again, it is better to squeeze most out of the existing inventions.
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