Had any good business ideas lately? Let’s start with the bad news: The patenting of an invention is quite costly, with lengthy administrative delays and potential complications.
Furthermore, the protection of intellectual property requires expenditure at a time when the viability of a business or enterprise is often still uncertain.
To ensure patenting is a good investment for your future business plans, we can help you investigate the commercial potential of your idea or invention. Patents come in different strengths depending on their inventiveness and novelty.
A weak patent may be registrable, but you may be unable to defend it against rival inventions, given the high cost of infringement proceedings. If your invention has a short shelf life, such as business software, you may not be able to recoup the cost of the patent. For these reasons, it pays to discuss the prospects with us fully before proceeding with your plans.
Patenting is essentially made up of three parts: the application, the examination and grant, and the renewals. The timeframe from application to grant of patent usually spans 2-3 years if no legal obstacles are encountered.
An invention is generally only patentable if it is a product or process that is new and inventive (non-obvious)
In general, to be patentable the invention should be of an industrial, commercial or technical character as opposed to a purely artistic or intellectual exercise or idea. However, technology does not always develop in leaps and bounds and even an incremental development can attract patent protection if it results in significant advantages.
It is your responsibility as an inventor to clearly explain and demonstrate the subject matter of your invention to us. We need to encapsulate your ideas in a patent application that explains how the idea is or would be implemented and that defines the scope of the monopoly sought.
A patent application is made up of specifications and claims which describe the invention in fine detail. The drafting of specifications and claims is a highly demanding professional skill and we work with the best known specialists in the appropriate technical field. Nevertheless, we cannot predict the patentability of an invention and ultimately, the question of whether your application is to be upheld and registered as a patent will be assessed during an official examination at the patent office.
Once a patent has been granted, you have an enforceable right in the country in which you have obtained the grant. A granted patent creates value in your business by allowing you to benefit exclusively from the financial rewards flowing from the commercialisation of your idea
Depending on the circumstances and while the patent remains in force, you may rely on the patent to:
- Threaten and, if required, bring infringement proceedings against a copier of your idea,
- Sell your idea for a lump sum payment,
- License your idea for royalties (and/or a lump sum payment),
- Improve your bargaining position in commercial negotiations with strategic partners such as manufacturers, investors, partners or licensees,
- Deter third parties from copying your idea.
Inventors are typically offered a choice at the beginning of the patenting process – to file a Complete Patent Application, or to file a Provisional Patent Application. If the invention is fully developed and if the applicant wishes to obtain a registered patent as soon as possible, it may be appropriate to file a Complete Application.
Commercial circumstances are often better served by filing a Provisional Patent Application (PPA). A PPA is a temporary or interim application filed with a patent office before making a complete application or foreign application. This is a practical and useful option, particularly suitable for an invention in its infancy where changes and modifications are envisaged in the 12 months period following the filing of the PPA.
Filing a PPA is the first stage in the patent application process and is less expensive, at least in the short term, than a Complete Application. The application gives the applicant a 12 months “option” to proceed with patenting. This allows time to develop the idea further, develop a market ready prototype, investigate some of the commercial implications and explore possible markets for its manufacture or sale before being burdened with the cost and effort of gaining full legal protection. Depending on the outcome of your commercial negotiations, you may even decide to cut your losses and stop proceedings by allowing the application to lapse at the end of 12 months.
A Provisional Patent is not examined and its contents remain secret to the public. This means that the inventor is very much in control of the information concerning his invention and can disclose it, or not, depending on his situation. This is extremely advantageous and can give an inventor considerable leverage in the marketplace.
Although it is not yet a patent, a PPA will provide an applicant with an all important priority date (your filing date). Once you have established an effective filing date for your invention, you can use the term: “Pat. Appln. No…..” on your invention and product promotions — at least for 12 months from that filing date. The benefits are:
- a patent examiner cannot cite against your later filed patent application any references (such as patents, products on the market, or journal articles) that appeared after the filing date of the provisional application that could prevent you from obtaining a patent;
- if someone else invents the same thing after your filing date, that person cannot obtain a patent on the same invention;
- you can rely on the “patent pending” status if you wish to commercialise the invention and need to disclose your idea to interested parties (we will provide the appropriate Confidentiality Agreements).
A PPA should define the invention in broad terms, and include a detailed description of the various versions of the invention you envisage. The specification must provide enough details for a skilled worker to duplicate the invention and fulfill the requirement that “the disclosure adequately provides a written description of the full scope of the subject matter regarded as the invention”.
Where an apparatus is the subject of the patent, it is imperative that the description is supported by drawings which clearly illustrate the inventive features of the invention.
If the written description requirements are not met in the provisional application, a patent issuing from that provisional application may not be able to claim priority back to the provisional application.
This can have serious repercussions. For instance, a patent that is unable to claim priority to a provisional application because of a lack of sufficient written description may be subject to prior art references to which it otherwise would not be subject. These prior art references may invalidate the patent.
Moreover, since a patent application must be filed within one year of publicly disclosing the invention or offering the invention for sale, relying on a provisional application with insufficient disclosure may cause that disclosure to be outside the one year period for filing an application. In either situation, the patent would be worthless.
A major consideration is the cost and benefit of searches. The purpose of a search would be to see whether your invention is likely to be patentable, and whether your invention may infringe someone
else’s patent rights. In most countries, patentability requires that your claims satisfy an “absolute novelty” test. You may choose to presume that your invention is novel and refrain from requesting searches, simply awaiting the results of official searches conducted later. Alternatively, you can instruct us to conduct a preliminary search or have searches carried out by a specialist searching company. Searches are relatively expensive and are never totally conclusive.
If you wish to find out whether your invention is likely to be patentable, and therefore whether it is worthwhile continuing with the patenting process, we recommend making an International Type Search Request within 6 months from the filing date of the PPA. The typical cost of that search conducted by the Australian Patent Office is $2,000 to $2,500.00. The actual cost depends on the number of “prior art” documents that are cited in the report.
In order to maintain the priority date of a provisional application overseas, it will be necessary to establish a filing date in the countries of interest within 12 months of filing the PPA. You can establish this filing date by filing individual complete patent applications directly in the countries of interest, or by filing a Patent Cooperation Treaty (PCT) International Patent Application.
A PCT Application or Complete Application is more comprehensive than the PPA and will require a full specification, a full set of claims and formal drawings. The application will be able to incorporate any improvements and further developments you have made to the invention.
Proceeding via the PCT route will add an additional expense, but an inventor can delay filing in individual foreign countries for up to an additional 10-18 months (depending on the country). This allows you yet more time to assess the commercial viability of the invention and to determine which countries are worth filing in.
In addition to the PCT cost, filing costs will become payable for each national phase application at a time 30 months from the priority date. At national phase level, further costs are encountered in progressing a patent application through the examination procedure.
Generally, the costs after filing to the time of grant are usually between one and a half and three times the filing cost depending on the country, fluctuations in the exchange rate and the rigour of the patent examination.