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4 Common Mistakes to Avoid on Your Patent Journey

June 6, 2018

patent errors

If you want to profit off of something new and amazing that you created – or at the very least, get credit for your invention – obtaining a patent can lock down the rights to your intellectual property. However, the patent process is long, complicated and very costly. It must also be completed in every country in which you wish to be protected. So before you begin your patent journey, take a moment to make sure that you don’t accidentally put a stumbling block in front of your own success.

 

1. Make sure the invention is patentable

Patents give you territorial rights – meaning they only protect you in the country or region in which your patent is granted. Most countries rely on three basic requirements to grant a patent: the invention must be novel, non-obvious and useful. However, there are different interpretations in different countries – and entire debates on whether certain subject matter areas are even patentable at all (e.g. animals, plants and DNA). So, before anything else, you need to decide where you want to file and then check that your invention meets the patentability requirements in each of those countries.

2. Make sure no one else thought of it first

Patents are only issued for new ideas that can be commercialized. If anything has been made public about your invention – at any time – it can invalidate your patent application. Evidence that your invention is already known is called prior art. Before you try to patent your idea, you must complete a prior art search to ensure that you really are the first to come up with your idea.

Prior art can include almost anything. It can be an existing patent, a college thesis, a magazine article, a website, a prehistoric cave painting, or a modern-day Tweet. In fact, according to the European Patent Office (EPO), “prior art does not need to exist physically” at all. The EPO says, “It is enough that someone, somewhere, sometime previously has described or shown or made something that contains a use of technology that is very similar to your invention.”

You can conduct an initial prior art search on your own. Start by thinking of all the ways your invention could be described, and then search the internet to see if it’s really the case that you got there first. You can search the records of individual countries using their IP authorities’ search engines (click here to search the U.S. Patent and Trademark Office or here to search the EPO). Check Google Patents to get a sense of what has already been patented internationally. Then, if you don’t find any prior art yourself, consider hiring a patent search professional. The thoroughness a qualified professional brings to the table simply can’t be matched by an amateur search – and if you want to patent your invention internationally, it can be well worth the expense.

3. Don’t talk about it!

You’re probably excited about your invention, but if you want to successfully patent it you cannot let it become public knowledge. That could constitute prior art. One practical way of ensuring confidentially is to put a non-disclosure agreement (NDA) into place before telling a person about your work. This includes anyone testing your invention for you or otherwise helping with its development, as well as any patent attorneys or agents conducting a patent search for you.

Note: In the U.S., you generally don’t need to ask a patent attorney or agent for a confidentiality agreement because they’re obliged under Title 37 of U.S. federal law to treat your materials confidentially – even if you’re just a prospective client. In other countries, you will need to find out what local laws dictate about your interactions there.

4. Don’t write an ineffective patent application

Once you feel confident that your invention is patentable, you can begin working on its patent application/s. If you’re drafting your own patent application — or even if you’re preparing your information for a patent attorney or agent — it’s important to describe your invention in a way that will make sense to a non-expert. Keep the following in mind:

  • Processes that may seem obvious to you probably won’t look that way to a patent examiner or lawyer. You need to spell out each step with detailed clarity.
  • Terminology that is second-nature to you may sound like incomprehensible jargon to everyone else. Make sure to explain any terminology that is not common knowledge.
  • Illustrations do not make up for shortfalls in descriptive text. Illustrations are there to support the text, not takes its place.

The bottom line is that making assumptions about what others know is dangerous. A patent, once issued, is a legal document in which wording may be the key element in causing or resolving a dispute. To give your invention the best chance for success, be sure to leave nothing out.