You or someone in your company has made a technical invention? Great! Possibly you are wondering if you can protect it by a patent and how this works? This article will give you a brief introduction to the basics of patent protection to help you make the right decisions.
I. Keep your invention secret!
Of course, most inventions will only generate money if you can sell them. You may even want to present it at trade fairs, advertise it on your homepage, or talk with partners. However, there is one basic rule that you must follow if you want to have a chance of getting a patent for your invention:
No public disclosure before the filing of a patent
The reason is simple: If you disclose your invention publicly, it is not novel anymore if you file for a patent afterwards. Novelty is a key requirement in almost all jurisdictions for obtaining patent protection, and even publications made by the inventor are regarded as relevant novelty-destroying prior art.
If you want to talk with business partners before filing a patent, a non-disclosure agreement between the parties may be a solution. However, it may be hard to enforce and to get damages if a party should break the agreement.
II. What can be patented?
Patents are intellectual property rights suitable to protect technical inventions. For example, inventions made in mechanical or electrical engineering, physics, biology, chemistry, pharmacy, material sciences, or industry automation can be protected. In addition, computer-implemented inventions (software), including artificial intelligence, can be protected if they meet certain requirements. For example, if they are used to control an apparatus, provide specific functionality like encryption or data transmission, or provide specific functionality like encryption or data transmission specific user experience.
Scientific theories, game concepts, pure business models, graphical designs, music or similar subject matter, cannot be protected by patents. However, other intellectual property rights like trademarks, design protection, or copyright might be suitable in such cases.
A patent is not a scientific award. There is no requirement to prove an extraordinary achievement in order to get a patent. As a general rule, if you made some change to the known prior art that has some technical and/or economical advantage, it may be worth considering filing a patent.
III. Securing your rights
In order to protect your invention, you must make a first patent filing before any public disclosure. While you can, in principle, choose any national or regional patent office for the first filing, a national patent application is suitable in most cases.
For example, the German Patent and Trademark Office has several advantages for a first filing, even for applicants from outside of Germany. Fees due with filing are quite low (especially compared with the European Patent Office), applications are accepted in German and even in English. In addition, the office has many highly qualified specialized examiners in relatively small technical fields. In most cases, a search report is issued in about nine months, and a proceeding that may end with patent protection for Europe’s largest economy is initiated.
The search report issued by the office of first filing gives you an overview of relevant prior art found by the examiner. It is an important source of information to decide how to proceed further with your application.
IV. International Protection
With a first filing made at any suitable patent office, you automatically receive the right to file a subsequent application in almost any country during one year, called the priority year.
For example, suppose you made a first filing at the Indian Patent Office or the German Patent and Trademark Office. In that case, you may file in the United States, at the European Patent Office, in China, and in Japan during that priority year, and any disclosure made after the first filing will not be detrimental for such subsequent filings, as long as the subject matter is covered by the first filing.
However, in most cases, it is the best option to file an International Patent Application governed by the Patent Cooperation Treaty (PCT) at the end of the priority year. This buys you another 18 months of time because national or regional phases of such a PCT application have to be initiated no later than 30 months after the first filing date. You will also get another search report. For example, a German company having made the first filing at the German Patent and Trademark Office will get another search report from the European Patent Office, giving a better basis for deciding how to proceed further.
A subsequent application may even be adapted, for example, to include new developments made since the first filing or to delimit the application against prior art found in the search report of the first filing.
V. Frequently Asked Questions
Q: When will a patent application be published?
A: 18 months after the first filing, any application will be published if it is not withdrawn. So the public will be informed about your patenting activity after that time.
Q: Can I draft a patent application myself?
A: You are allowed to do so by law. However, it is not advisable to do so. Patent applications written by individuals unfamiliar with patent language and strategy usually contain many mistakes that render the application useless. If an application is filed, the possibilities to correct such mistakes are very limited afterwards. Patent Attorneys are trained to write patent applications such that you get the best patent protection and have the best options during patent examination.
Q: Is a “provisional application” an option to save money?
A: Some patent offices promote “provisional applications” as a cheap way to secure rights. However, such provisional applications turn out to be simple registration processes of documents with very low or even no fees. Moreover, while these provisional applications secure a priority right for a subsequent filing, you will not receive a first search report during the priority year. You will thus have no suitable basis for deciding how to proceed further with your application, for example, if a PCT application is worth it.
Most of the costs of a professionally drafted patent application used as a first filing relate to drafting the application. Therefore, while some hundred Euros may be saved using a provisional filing compared with the official fees due with a regular German national filing, this saving will not outweigh the disadvantage of having no search report before the end of the priority year.
Q: How long will a patent protect the invention?
A: In most countries, a patent can be upheld for up to 20 years, as long as it is not withdrawn by the patent proprietor or invalidated in an attack by a third party.
Q: Is my invention worth a patent?
A: As stated above, a patent is not a scientific award or a prize for extraordinary achievements. Most patent applications relate to incremental inventions, not to breakthrough developments. If the invention is presumably new, i.e., it differs from how it was made before, you should then consider filing a patent.
Q: Which rights do I get from a patent?
A: The most important rights after granting a patent are injunctive relief (the right to forbid others to use your invention) and the right to get damages from infringers. However, other rights are available, e.g. the right to obtain information from infringers or the right to confiscate infringing products by the customs already at the port of entry.
VI. Conclusion
Patent protection is a powerful tool to protect technical inventions. With patent protection, products may be sold, but competitors can be prevented from copying.
It is important to follow some simple rules outlined above, especially to file a professionally drafted first filing before any publication of an invention.
You may certainly contact the author for any preliminary consulting regarding your invention.
Patent Attorney Dr. Martin Schlosser
+49 821 543 888 90 / mail(at)schlosspat.de
Dr. Martin Schlosser is a German Patent Attorney, European Patent Attorney and European Trademark and Design Attorney located in southern Germany. He advises and represents both SMEs and large corporations regarding European and international intellectual property rights.
