In technology-rich companies, intellectual property is likely to mean patent applications. Simply put, patents protect technical inventions and this means the applications of science, rather than the underlying scientific principles. Once an invention has been made, the first questions to answer are “Can we patent it?”, “Who should write the patent application?” and “What information will they need?” If there is some new science involved in the invention, then the answer to the first question is invariably yes, as long as no one has let the cat out of the bag by disclosing the invention to the public.
Patents are granted for inventions, which are novel. By novelty, it means these inventions have not been in public domain. The organizations whose mainstay is innovation take utmost care to maintain absolute confidentiality of all of its research and developmental work. These ways include non-disclosure agreements (NDAs), employment agreements and invention disclosure records (IDRs). Broadly speaking, NDAs restrict use and limit disclosure of your company’s protected information; the employment agreements define what IP is owned by the company, and how the employee is expected to handle confidential information and other IP during and after the course of their employment; and an IDR is an internal document containing relevant details about company-related inventions.
Furthermore, once a product is released on the market, it is generally considered an enabling disclosure to the public which prevents patent protection. Therefore, it is important that inventors should consider filing a patent application on any invention they plan on showing or discussing at a trade show, in a magazine, on a website, in the course of business dealings, or in any other public way.
Also, a pending patent application allows the inventor to use the label “patent pending” and protects the invention to the extent to which the filed application describes the invention.
Pitfalls to Avoid
Herein, “Pitfalls to avoid” suggests that certain fatal events must be avoided on the way to the Patent Office to obtain a valid patent or perhaps even later invalidate an issued patent.
Patience is not a virtue
Waiting too long to fill out a patent application is the biggest patent pitfall out there. Getting a patent is a competitive thing, and procrastination on the part of inventors is a leading factor in preventing patent approval. Putting off submitting an application can give someone else the opportunity to jump in and push their similar (or identical) idea through. As we live in a first to file world, courts are no longer interested in who invented what first.
Forgetting to do a patent search before filing
Even though it is one of the most fundamental aspects of pursuing a patent, a lot of applicants forget to do a patent search in the beginning. A patent search entails searching for all published patents to see if any of them have similarities to yours. A patent search can help you determine if your invention is novel or not. This is absolutely critical from a legal standpoint when submitting an application.
Not enough documenting and record-keeping
In creating your invention or design, keep track of absolutely everything along the way. This includes all sketches, computer programs, documents, and communications that involve all parts of the invention process. Date everything that you can, even noting the time if need be. These records and documents will be important as you go through with your patent application.
Filing an application that’s too specific
Many important inventions are developed to address or resolve a specific problem. However, many inventions will also end up having broader applications. An overly specific patent application could cause you to lose out on the full range of possibilities for monetizing your invention, for example, like licensing your patent across multiple markets.
Filing an application that’s too broad
As mentioned above, some inventors may be inclined to file a broader patent application, so as to maximize the commercial potential of their intellectual property.
But broad doesn’t mean obscure. An overly ambiguous patent application can be easily challenged. It could become vulnerable to prior art that’s irrelevant to what your invention actually does. If your application leaves out specific details, you might not be able to enforce your patent in a litigation context. So, when drafting your application, get specific. Use clear and concise language to discuss your invention and all elements surrounding its implementation. Therefore, your application should not only include key details about the invention and how to implement it, but also cover any alternate embodiments the invention could have.
Lack of full disclosure of the invention
Full and detailed disclosure is the rule. This means that anything in the claims has to be discussed in the specification. A closely related requirement is the enablement requirement, which requires that a person of ordinary skill can practice the invention without undue experimentation. This means that it must be obvious to a person of ordinary skill that the invention makes sense, and that a “person of ordinary skill” could go into a lab or shop and make the thing. If you are doing anything unusual or special, that should be explained in detail. If an examiner or patent challenger thinks there is something missing, the patent will be rejected and can also be invalidated in the courts for lack of written description or enablement.
It’s important to keep all of these potential mistakes in mind as one proceeds about getting a patent. One needs to be ready for anything and everything. One also should familiarize oneself with all aspects of the patent process. Understanding the ins and outs of the entire patent process will additionally help to avoid common mistakes and navigate every step with confidence along with timely filing and prosecution of patents.
Article by Manisha Singh and Shephali Pawar, 1st published on Lexology.