What considerations should you make before filing a patent? Here are some questions to review when deciding whether to file a patent application for your invention.
If I have an invention, do I have to get a patent to make and sell it?
No. A patent is not a prerequisite to the commercialization of an invention and a patent does not give the patent owner the right to make and sell the invention.
If I have never seen an invention before on the market, can I get a patent to the invention?
Not necessarily. The patentability of an invention in the US depends on various factors, only one of which is whether it has or has not been on the market.
Can I get a patent on a product that I or my company conceived many years ago but never made or patented?
Possibly, but possibly not. By delaying when you file a patent application, your rights may be forfeited. The activities of the inventor/company as well as those of third parties can negate patentability.
What should I do to protect my rights prior to filing a patent application?
You should keep information about the invention secret until a patent application is filed. Patent rights (including international rights) may be lost if public disclosures are made prior to filing a patent application. Confidentiality agreements should be executed by all persons, including employees, outside contractors, and joint development partners, to whom information about the invention is disclosed. It is particularly important to inform sales personnel about the need for non-disclosure of an invention until a patent application is filed.
What records should I keep when developing an invention?
When you or your scientists first conceive of an invention, you should immediately describe it in a written document (with drawings if possible) which is witnessed, in confidence, by someone who can later corroborate it. After conception, carefully dated records should be kept to document activities that reduce the invention to a working prototype (referred to as “reduction to practice”). Although patent validity is based upon a “first-inventor-to-file” basis, records of invention can still be valuable in demonstrating ownership of an invention and possibly even in later “derivation” proceedings. Laboratory notebooks, whether paper or electronic, are a key element of record keeping, and there are requirements to ensure they are properly filled out and kept secure. A patent attorney can assist in developing a record keeping procedure and structure tailored to your business and industry.
What if I haven’t made a working prototype or example of my invention?
Although there is no requirement of a working model to apply for a patent, the application must describe a process, product, or composition with sufficient detail to enable someone else to make it in a way that will work. In “unpredictable” fields such as chemistry and biotechnology, it is often desirable to test an invention sufficiently to confirm its operability. Otherwise, the patent application may be found to be defective.
What is a public disclosure that might bar obtaining a patent?
In many countries, a patent application cannot be filed after a public disclosure of the invention that describes the invention in enough detail to reproduce it. A scholarly paper certainly can be a public disclosure. Although grant applications typically are not made public, grant final reports can be available to the public and could bar obtaining a patent. If a department seminar is open to the public, then disclosure of an invention during that seminar could be a bar to obtaining protection in some countries, including most European countries. A biological or sequence deposit can be a disclosure of your invention if the deposit is unrestricted. Other writings and even oral presentations may be public disclosures too. For some countries, a nonconfidential disclosure of your invention to even a single individual can be a bar to obtaining a patent.
How reliable are searches to identify public disclosures?
A careful search of relevant databases, including USPTO records, is a good—but not certain—test of patentability. Because a patent application may be rejected on any evidence that the invention was previously disclosed or obvious, it is always possible that relevant information exists in forms not available through the database or USPTO searches.
How do I avoid jeopardizing my patent rights?
If you or one of your scientists has an idea that may be patentable, contact a patent attorney for advice on how or whether to proceed. If you work at a university or research institution, contact your licensing office to get the advice you need to protect your inventions.
Will the preparation of a patent application take a lot of the inventor’s time?
The involvement required of an inventor depends on the role of the inventor in the patent drafting process. A patent attorney needs the inventor to explain the invention and background information and review the patent application prior to filing. It is a patent attorney’s responsibility to quickly assimilate the information from the inventor, define the invention in a manner that distinguishes it from prior technology, and prepare the patent application. However, an inventor can contribute to this drafting process too.
What should I take to an initial interview with my patent attorney?
You should provide a complete written record of the invention, detailing as many aspects as possible. Drawings can be included, if appropriate. If your invention is complex and the description involves a great deal of material, you may also prepare a summary for ease in explaining the general outline of your invention. Lastly, bring any information you have that identifies the prior art and the problem(s) you were intending to solve.
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