Executive Summaries Jun 7, 2021
You Just Invented Something, Now What?
You just came up with a great invention. You want to start selling it as soon as possible, before anyone else has the same idea. Or, perhaps, you want to discuss it with potential business partners or investors. In any case, you need to protect your intellectual property (“IP”).
For inventions, IP protection usually comes in the form of patents. So how do you go about obtaining a patent and what are the do’s and don’ts that you should keep in mind?
Don’t Share Your Idea Before Filing a Patent Application
Sharing your invention to individuals not bounded by confidentiality obligations, typically in the form of a Non-Disclosure Agreement (NDA), could impact whether or not you could eventually obtain patent protection for that invention. In most countries, for an invention to be patentable, it must not have been made available to the public before a patent application is filed. For instance, it could result in loss of patentability if, before filing a patent application, you were to disclose your idea on:
- a public forum (e.g., social media);
- a creative projects funding platform (e.g., Kickstarter); in
- a non-confidential meeting; or at
- a conference.
This should also be kept in mind while you go through the product development process (e.g., developing/testing a prototype, providing samples of your product, etc.). While some jurisdictions, including Canada and the United States, allow you to file a patent application within one year of disclosing your idea, it is generally advised not to rely on this one-year grace period since other jurisdictions, including Europe and China, do not offer such a grace period.
Therefore, disclosing your invention before filing a patent application limits where you can obtain patent protection
Do Consider Conducting a Patentability Search Before You File a Patent Application
This step can help determine if your invention is likely to be patentable before you decide to incur the costs associated with preparing and filing a patent application.
For an invention to be considered patentable, it must be new and non-obvious in view of the state of the art, and while your invention may seem new to you, it is possible that someone else has already thought about it.
A patentability search helps in identifying references (e.g., patents, products, journal publications) that disclose technologies that are closest to your invention, thereby allowing you (and/or your patent agent) to assess if your invention already exists or if a similar idea has previously been disclosed. If you’re aware of the trends in your market and you’ve dedicated time and effort in developing your invention, there are good chances that it is patentable. In any case, if your invention is not outright disclosed in the prior art references that you have identified, you then need to assess whether a person of relevant skills in the field of the invention and taking cognizance of the prior art references would find your invention obvious. If not, your invention is likely patentable, and you should consider preparing and filing a patent application! Be cautious that assessing whether an invention is obvious or not is a question of law and hence assistance of a qualified professional is strongly advised.
Do Establish an Appropriate Patent Strategy to Defer and Minimize Some Costs
There are various costs associated with preparing and filing a patent application including drafting costs, filing costs and prosecution costs. Notably, a patent application must be filed in each country you want to obtain a patent in, thus requiring filing fees for each of those countries which can quickly add up. Establishing an appropriate patent strategy can help defer and minimize some of these costs. For instance, in cases where you plan on filing in numerous countries, filing a Patent Cooperation Treaty (PCT) application could help to delay some costs by up to 30 months from your initial patent filing.
Besides preventing others from making, using or selling your invention, securing a patent for your invention has numerous advantages for fostering a steady growth of your business in the long run, as described in greater detail in our article: 5 Reasons for Startups to Invest in a Patent Portfolio. It is worthwhile to discuss with your patent agent to clearly define what your invention is and what problem it solves. The preparation of the patent application and the filing strategy are important aspects to consider and should be in line with your business goals.
Don’t Think You Can Launch a Product Without Any Risks Once You’ve Filed a Patent Application
This is a common misunderstanding amongst inventors – filing a patent application, and even obtaining a patent once your application is granted, does not mean that your product does not infringe somebody else’s patent. This means that you can have a patent for your invention, but your invention may at the same time infringe on another patent, for example, if your invention is an improvement to a patented technology. To avoid this situation, it is advisable to conduct a freedom-to-operate (FTO) assessment before launching your product.
An FTO assessment identifies potentially problematic patents and gauges whether your product would infringe these patents.
The FTO assessment requires a different type of search than the one discussed above. As opposed to a patentability search which aims to discover prior art references publicly available anywhere in the world, an FTO search is focused specifically on granted (or about to be granted) patents in a particular country.
If this assessment is done early enough along the product development process, corrective actions can be taken by modifying your product so that, once launched, it does not infringe any of the identified patents. In highly patented technological domains, this can greatly mitigate risks and helps avoid taking a potentially costly leap into the unknown.
Acquiring a patent, along with helping you maintain a competitive advantage over your competitors, can help you build the foundation required for a thriving business. BCF’s Patents team can help you navigate this process and optimize the value of your innovations. Should you have any questions regarding this article or patents in general, please do not hesitate to contact our team.
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