Patent Traps – What to avoid: 4 Tips for inventors
This article is written in general terms to assist and guide inventors and commercialisation institutions to avoid some common patenting mistakes. You should always seek specific advice concerning your unique situation from a Patent Attorney.
For the reasons outlined below, we recommend continual involvement of a Patent Attorney at every step and stage of Commercialisation, if only to check that there are no detrimental consequences to your monopoly rights.So what are the key mistakes that inventors make which invalidate their patents?
1. Disclosure Before Publication
Many inventors are “too” passionate about their idea. Also, Researchers in Universities, Hospitals or other organisations usually feel the need to publish their new work to assist in obtaining funding for further research or for “fame” for that next position.Know that it is clear patent law (novelty rules) that early disclosure in any form, including publication jeopardises patent protection and ruins your ability to gain a marketplace monopoly. Under Australian law, overseas disclosure can count against you too, just as if the disclosure is made within Australia. So – keep it secret until your Patent Attorney has filed a patent for you.For example, a power point presentation or newsletter release before filing a Patent Application invalidates the patent rights.The only way to disclose without destroying novelty is to have a confidentiality agreement signed by the other party.Some countries, such as Australia and the United States (USA) allow a “grace period” for up to 12 months against prior publication, but it should not be relied upon as there can be problems with enforcement and the extent of damage claims.It also pays to keep a “lab record” or notes of your invention because in some jurisdictions (USA) this can assist to identify who the rightful owner of an invention.
2. Searches – Re-inventing the wheel happens all to often.
Countless times we have been approached by inventors, including Universities, only to find in our searches that their research was not novel and had already been patented.Early searching saves substantial funds and wasted time in many cases for our clients. The last thing you want to find out is that back in 2002 the same discovery was made and invention forged.Always do as much searching as you can, and also have your professional patent attorney involved at an early stage.
We are finding more and more cases where the inventors have gone too far to form conclusions without the appropriate experimental results or evidence to support their claim to an invention.As of the date of the patent is a legal requirement that you have reasonable experimental proof to “claim rights” to your invention, without the need for further experimentation or invention by others. Sometimes more than one test is required to meet the patent sufficiency requirements.Also, well reported and written documentation of the experiments are data must be kept and backed up, in a safe, or in several locations. This may be needed to defend the patent against invalidity submissions made against the Patent during enforcement proceedings.
4. Improvements – Be careful to publish
We constantly remind clients, but if any improvements are made after the first patent is lodged, then a second patent must filed to capture the improvement, before it is disclosed.Also, it is questionable whether you should “academically publish” the invention after a provisional is filed. This can be quite dangerous if improvement patents are lodged. The academic disclosure may invalidate the improvement patent because it is considered obvious when considered in light of the academic paper or publication.This is particularly the case if researchers suggest in their publications that further experimentation would lead to improvements – thereby resulting in the improvement patent being considered obvious and therefore invalid.
Always be guided by your Patent Attorney every step of your commercialisation pathway. It is difficult to remember everything that is required, and easy for an inventor to invalidate or forfeit their position by making incorrect decisions.Please contact our firm to assist in protecting your valuable Intellectual Property.
Meetings can be booked online here.