Patenting – An Overview For New Inventors

Stephen Szirmai asked:

If you are serious about an idea and want to see it turned into a fully fledged invention, it is essential to obtain some form of patent protection, at least to the ‘patent pending’ status. Without that, it is unwise to advertise or promote the idea, as it is easily stolen. More than that, businesses you approach will not take you seriously – as without the patent pending status your idea is just that – an idea.

1. When does an idea become an invention?

Whenever an idea becomes patentable it is referred to as an invention. In practice, this is not always clear-cut and may require external advice.

2. Do I have to discuss my invention idea with anyone ?

Yes, you do. Here are a few reasons why: first, in order to find out whether your idea is patentable or not, whether there is a similar invention anywhere in the world, whether there is sufficient commercial potential in order to warrant the cost of patenting, finally, in order to prepare the patents themselves.

3. How can I safely discuss my ideas without the risk of losing them ?

This is a point where many would-be inventors stop short following up their idea, as it seems terribly complicated and full of dangers, not counting the cost and trouble. There are two ways out: (i) by directly approaching a reputable patent attorney who, by the nature of his office, will keep your invention confidential. However, this is an expensive option. (ii) by approaching professionals dealing with invention promotion. While most reputable promotion companies/ persons will keep your confidence, it is best to insist on a Confidentiality Agreement, a legally binding document, in which the person solemnly promises to keep your confidence in matters relating to your invention which were not known beforehand. This is a reasonably secure and cheap way out and, for financial reasons, it is the only way open to the majority of new inventors.

4. About the Confidentiality Agreement

The Confidentiality Agreement (or Non-Disclosure Agreement) is a legally binding agreement between two parties, where one party is the inventor or a delegate of the inventor, while the other party is a person or entity (such as a business) to whom the confidential information is imparted. Clearly, this form of agreement has only limited use, as it is not suitable for advertising or publicizing the invention, nor is it designed for that purpose. One other point to realize is that the Confidentiality Agreement has no standard form or content, it is often drafted by the parties in question or acquired from other resources, such as the Internet. In a case of a dispute, the courts will honor such an agreement in most countries, provided they find that the wording and content of the agreement is legally acceptable.

5. When is an invention fit for patenting ?

There are two main aspects to this: first, your invention should have the necessary attributes for it to be patentable (e.g.: novelty, inventive step, potential usefulness, etc.), secondly, there should be a definite need for the idea and a probable market for taking up the invention.

6. About patents.

Patents are documents which publicly and fully disclose an invention and, if properly designed, will provide the inventor legal protection against unauthorized use (note: a Confidentiality Agreement is a personal disclosure, while a patent is public disclosure). Patents can be bought and sold, so that the owner of a patent may not be the inventor. Also, it is possible to retain the patent while selling the right to use it. This is the meaning of the phrase : ‘manufactured under license’.

The following are the main patent types:

o Provisional Patent Application

o Final (Utility) Patents

o Design Patents

o Plant Patents

o International Application *

* The so-called International Applications (or PCT applications) are applications for Utility Patents simultaneously in several countries. There are certain savings compared to making separate applications in taking out individual patents for the countries in question, but the result is the same, the applicant ends up with individual patents for each of the countries in question and has to pay the individual patenting and renewal fees. There is no such thing as an International Patent
A few of the above patent types will be briefly discussed:

7. What is a Provisional Patent?

It is a simplified version of a final (or Utility) patent and offers you complete international priority protection for 1 year. After that, you must proceed to the final patent, or you will lose the protection gained from the Provisional. The Provisional Specification is the cheapest form of total legal protection around the world and was designed with starting-out inventors in mind. An important aspect of a provisional patent is, that on lodging it with a patent office it will stay ‘dormant’ and will not be examined until there is a legal challenge, e.g.: someone patents a similar invention and there is doubt which of the two were first. Here is an important point: on examining the two patent documents, it sometimes happens that the earliest applicant loses out due to the poor way his Provisional is written. While it is perfectly legal to write and lodge your own patents in order to save on the cost of preparing it (you would still have to pay a lodgment fee), it is generally a very foolish thing to do, as you will not be sure whether your invention is protected or not. This goes for both Provisional and Final patents. While it is not essential to lodge a provisional specification, as you are entitled to go for the final patent straight away, this is not usually recommended.

The advantages of this type of patent procedure are as follows:

(i) a provisional specification allows you to modify it within the one-year period, without affecting its validity. This is very convenient as it allows one to protect the invention while it is still developing. This is not possible with the final patent.

(ii) the Provisional Patent Application provides priority protection Internationally for one year, this aspect is superior to other types of patenting which only apply for a specific country.

(iii) the provisional patent application allows for a ‘breathing space’ – a full year to look around for a potential backer, someone who may even be prepared to pay for the final patenting.

(iv) There are considerable savings, as the Provisional Patent Application costs 10 to 12 times less than other forms of patenting.

When contemplating this form of patenting, it is advisable to turn to agencies experienced in this type of procedure (for instance

8. About the Final Patent (‘Utility Patent’)

This is the final unchangeable form of your invention. Most usually, it will have a formal structure involving such things as background literature, disclosure of invention, claims, embodiments, practical examples for use, detailed figures and drawings, etc. It will protect your invention for 20 years from the date of filing and you will get a formal Patent Document once it has been fully examined and accepted. Usually, it takes from 12 to 18 months to obtain a final patent after application. It is approximately 10 to 12 times as expensive to prepare as a provisional patent and has to be taken out for each country separately, which makes it a very expensive process, as lodgment fees must be paid in each case. It becomes especially expensive if protection is sought. In more then one country. Therefore, a final patent should only be taken out where it is highly warranted, e.g.: when someone wants to develop your invention and would like to buy the patent rights.

9. Following the Patent Procedure

After a patent protection was obtained, whether in the form of a Utility Patent or a Provisional Patent Application, it is advisable to advertise it as widely as possible in order to make it stand out from the large body of currently valid patented inventions (some 50 million at present). The web site “Patent Showcase” as well as other agencies specialize in this and will be able to advise once this matter comes up.

Author: Dr. Stephen G. Szirmai

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