There are several important actions that an inventor should take before filing a patent application:
- Conduct a thorough prior art search: Before filing a patent application, it is important to conduct a thorough search of existing patents and publications to ensure that the invention is novel and non-obvious.
- Review patent laws and guidelines: Familiarizing yourself with the patent laws and guidelines set out by the USPTO can help you anticipate and avoid common reasons for rejection.
- File a provisional patent application: A provisional patent application can establish an early effective filing date and can also serve as a placeholder to further develop the invention and gather additional information.
- Work with a seasoned domain expert patent attorney: A patent attorney can provide guidance on the patentability of the invention, the best way to claim the invention and the best way to draft the application.
- Consider non-disclosure agreements and patents: Before filing a patent application, consider entering into non-disclosure agreements with any parties with whom you may share your invention to protect your rights and also consider filing patent applications in other countries if you plan to sell your product or service internationally.
By taking these steps, inventors can ensure that their patent application is as strong as possible and increase the chances of the application being granted.
why is a prior art search needed
A prior art search is needed to ensure that the invention is novel and non-obvious.
- Novelty: The patent laws require that an invention be novel, meaning that it is new and has not been previously disclosed or published. A prior art search can help identify any prior art that may be relevant to the invention and help to determine if the invention is novel.
- Non-obviousness: The patent laws also require that an invention be non-obvious, meaning that it is not obvious to a person having ordinary skill in the field to which the invention pertains. A prior art search can help identify any prior art that may be relevant to the invention and help to determine if the invention is non-obvious.
- Validity: A prior art search can also help to identify any prior art that may be relevant to the validity of the patent, including any prior art that may be used to challenge the patent in court.
- Infringement: A prior art search can also help to identify any potentially infringing patents or published applications that may be relevant to the patent application.
Conducting a prior art search can identify any potential obstacles to the patentability of an invention before the patent application is filed, which can save time and money in the long run. Additionally, a prior art search can also help to identify any potential licensing or collaboration opportunities for the inventor.
Be aware of IP law trends
Being aware of IP law trends is important for inventors, patent holders and companies to protect their innovations and stay competitive in the marketplace. Some of the trends in IP law include:
- Increasing focus on patent quality: There is an increased focus on ensuring that patents are of high quality and that they meet the requirements of novelty and non-obviousness. This includes increased scrutiny of patent applications during the examination process and increased efforts to challenge weak patents in court.
- Changing landscape of patent litigation: There have been significant changes in the landscape of patent litigation, including changes to the venues in which patent cases can be heard, changes to the rules of discovery, and changes to the standards for determining damages.
- Changes to patent eligibility: There have been recent changes to the laws and guidelines governing patent eligibility, particularly with regard to software and business method patents. These changes may affect the patentability of certain types of inventions.
- Greater use of inter partes review (IPR): IPRs are becoming increasingly popular as a way to challenge patents that are believed to be invalid. This has led to an increase in the number of IPRs filed and a corresponding increase in the number of patents that are found to be invalid.
- Intellectual Property Commercialization: There is an increased focus on the commercialization of intellectual property, including the use of licensing, joint ventures, and other forms of collaboration to monetize patents and other forms of IP.
- International IP protection: With the globalization of business, many companies are now looking for ways to protect their IP rights in other countries as well. This includes filing patent applications and trademarks in other countries and working with local IP counsel to enforce IP rights in foreign jurisdictions.
By staying informed about these trends, inventors, patent holders, and companies can make better-informed decisions about protecting and commercializing their IP assets.
Use the provisional application system to save money
Using the provisional application system can be an effective way to save money when seeking patent protection for an invention. A provisional application is a temporary patent application that allows an inventor to establish an early effective filing date while they further develop and refine the invention.
- Cost-effective: Provisional applications are generally less expensive to file than non-provisional applications, as they do not require the same level of detail and formalities as non-provisional applications.
- Time-saving: Provisional applications have a 12-month pendency period, during which the inventor can further develop the invention and seek funding or partners without the need to file a non-provisional application.
- Prior Art: Provisional application does not undergo a prior art search, which is a cost-effective way to establish an early effective filing date, which can be useful in some cases.
- No need to file foreign patents: Filing a provisional application can be an effective way to establish an early effective filing date while the inventor decides whether to seek patent protection in other countries.
- No examination: Provisional applications do not undergo examination and are not examined by the patent office, which can save time and money.
However, it’s worth noting that, a non-provisional application must be filed within 12 months of the provisional application, or the provisional application will become abandoned, and the inventor will lose the benefit of the earlier filing date. It is important to work with a patent attorney to determine if a provisional application is appropriate for your invention and to ensure that the provisional application is properly prepared and filed.
Work with a seasoned domain expert patent attorney
Working with a seasoned domain expert patent attorney can be beneficial when seeking patent protection for an invention. A domain expert patent attorney is an attorney who has specialized knowledge and experience in a specific field or industry.
- Technical Expertise: A domain expert patent attorney will have a deep understanding of the technical aspects of the invention and be able to provide guidance on the patentability of the invention and the best way to claim it.
- Industry knowledge: A domain expert patent attorney will have a good understanding of the industry in which the invention will be used and be able to provide guidance on the commercial potential of the invention and the best way to monetize it.
- Prior Art Search: A domain expert patent attorney will have the knowledge and expertise to conduct a thorough prior art search and help to identify any potential obstacles to the patentability of the invention.
- Prosecution: A domain expert patent attorney will be able to handle the prosecution of the patent application, including responding to any objections or rejections that may be raised by the patent office.
- Infringement: A domain expert patent attorney will be able to advise on potential infringement issues and take legal action to protect the patent if necessary.
- Licensing and Monetization: A domain expert patent attorney can also provide guidance on licensing and monetization strategies to help the inventor generate revenue from the patent.
By working with a seasoned domain expert patent attorney, inventors can increase the chances of their patent application being granted and ensure that their patent is properly protected and monetized.
use NDAs in addition to patent protection
Using non-disclosure agreements (NDAs) in addition to patent protection can be an effective way to protect an invention. A non-disclosure agreement (NDA) is a legally binding contract between two or more parties, in which one or more of the parties agree not to disclose or use certain confidential information.
- Additional protection: NDAs can provide additional protection for an invention, by preventing others from disclosing or using the invention without permission. This can be especially useful for inventions that are not yet patentable or for which a patent has not yet been obtained.
- Confidentiality: NDAs can be used to protect confidential information, such as trade secrets, that may be associated with an invention.
- Collaboration: NDAs can be used to facilitate collaboration between parties, by ensuring that confidential information is protected during the collaboration process.
- Licensing: NDAs can be used to protect the confidential information of a party that is licensing the invention to another party.
- Legal action: NDAs can be a useful tool in the event of a legal dispute, as they can be used to prove that a party was aware of the confidential nature of the information and agreed not to disclose or use it without permission.
It’s worth noting that NDAs are not a substitute for patents and other forms of IP protection, as they do not provide the same level of legal protection. It is important to work with a lawyer to ensure that NDAs are properly drafted and used in a way that is consistent with the laws of the relevant jurisdiction.
Manage the patent process
If you’re going to manage the patent process, you need to know about it. Not only does this require a bit of knowledge, but it also entails using the appropriate software. That’s where Patent Experts at PatentPC come in. They have over 25 years of experience guiding software inventions through the patent process.
The first thing you’ll need to know is that a patent process isn’t the same as a process that works for a large company. Despite the fact that most startups are small, they still need every patent they can get their hands on. Aside from a well-designed software solution, you’ll also want to look into hiring someone who can advise you on how to properly protect your intellectual property.
While managing the patent process isn’t as glamorous as it sounds, it doesn’t have to be. There are some best practices to follow to ensure your patents are a top-notch quality. For starters, don’t let your lawyers do the work for you. Instead, ask for a one-on-one meeting with a patent expert. By doing so, you’ll learn how to properly assess the risk of a patent and how to mitigate it. Plus, you’ll find out which technology is the best for your business, which types of patents you should pursue and which you shouldn’t.
For example, you should not attempt to file a patent on a flimsy premise. Instead, use best practices to determine the validity of an invention, whether or not it has a commercial value, and what steps to take to maximize your patents’ protection. In the process, you’ll be able to save money, and avoid the costly headaches of litigation. Ultimately, you’ll be rewarded with a patent that is enforceable, and you’ll be able to build a successful company around it.