When should you start thinking about patenting an invention? What things should you keep in mind as you work on new technologies?

When should you start thinking about patenting an invention? What things should you keep in mind as you work on new technologies?

Many people delay thinking about patents until their invention has been prototyped and adapted for its intended market. This can be a dangerous approach.

There are three main questions to keep in mind when thinking about the timing of filing a patent application:

1. When do I expect that information about the invention will become available to someone who has not signed a confidentiality agreement (or who has signed but whom I cannot adequately control or trust)?
2. Are there competitors in the field who could either: publish, file a patent application, or release a product or detailed promotional material that could include one or more important features shared by my invention?
3. How much money and time do I need to explore the limits of the various aspects of my invention that a competitor could try to vary in order to design around my patent?

Sometimes, the answers to one of these questions will force you to reconsider your approach to another.

For example, you might want to publish a paper on your invention, or to make a prototype available to a local clinic to field-test. Most countries require “absolute novelty” for inventions to be patentable. That means that the moment your invention becomes available for anyone who is not already legally obliged to keep it secret to see, you have lost patent rights in most of the world. This will be true even if, in fact, no one bothers to actually look at the invention or figure out how it works. Moreover, if someone who is legally obliged to keep your invention secret breaks their agreement and reveals it anyway, you will lose rights in most countries, despite the existence of the agreement. Although a few countries do have a “grace period” which allows valid filing within a set time (often one year) of public disclosure, this can seriously restrict your ability to secure a dominant worldwide market position for your product.

Thus, it is important to keep information about your invention secret until after a complete patent application has been filed. This includes not only information about final design, but also underlying information about principles of function and anything else that could help someone skilled in the field to arrive at your invention directly or indirectly.

Most countries of the world have a “first-to-file” rule. This means that, regardless of who makes the invention first, the first person to file an application on it will be entitled to patent protection. In most cases, the patent owner will be able to stop others from using the invention, even if they invented it first and kept it as a trade secret. Thus, if your competitors may be close behind you, you may wish to file a patent application earlier than you otherwise would.

Many people have heard of “priority” (sometimes called “Provisional”) patent applications and “formal” patent applications. A priority application is an early patent application, typically filed with the intention of filing a further, more detailed, application within one year’s time. A correctly filed priority application can preserve patent rights for up to one year in respect of anything that is literally disclosed within it. However, different countries can give different weight to the content of a priority filing. Thus, it is important not to assume that a priority filing will protect anything that was not literally within the application (even if it would have been obvious from it). It is dangerous to rely solely on the text and figures a scientific paper filed as a priority filing. It is generally best to file priority applications that are as complete as possible at the time and which describe not only the core invention, but also all viable variants on it, and a discussion of various options and considerations. All patent documents should be prepared by an experienced Registered Patent Agent with training in the technical field, who can ensure that both the legal and the technical requirements for good protection are met.

Patent protection is very expensive and, in the end, patents are nothing more than business tools. Thus, there will be many situations where the best decision is to delay filing until the commercial potential of a technology can be explored. In such cases, the extra time can be used to expand on the invention, processes for making and using it, applications, etc., to ensure that if protection is sought, the application which gets filed will be as strong as possible. This is important because a patent application generally must be novel and non-obvious over all “prior art,” such as publications, posters, etc. up to its date of filing. While a delay in filing can sometimes be the right commercial decision, it is important to bear the patent risks in mind and do what you can to reduce them. A good, commercially minded Registered Patent Agent can help with devising a strategy to approach these sorts of issues.

Patent law is a very complex field, and no article can address the range of situations that can arise. Fortunately, there are many excellent patent agents who can assist. For inventors working in institutions such as universities or government laboratories, the institution will generally have intellectual property polices and resources to manage inventions by employees. In such cases, your institution’s business office should be your first call.

—Margaret McKay is a Patent Agent with NRC Intellectual Property Portfolio Management, Technology and Industry Support in Ottawa.

This article is written for general interest only and nothing herein constitutes legal advice or creates a solicitor-client relationship.

Do you have questions on patent law? Send your questions to Adam Levin