Filing first patent application: Important

Bindu Sharma, Origiin IP Solutions, LLP

 Not maintaining confidentiality before filing patent application is the most common mistake inventors make......

After working intensely for months on the amazing idea, investing money, resources, it’s time to fulfill dreams, set-up new business with the idea and invention that has not been thought about or performed by anyone else in the world before.

This is the most common thought an inventor has before he approaches a patent attorney.

Is there anything else that is required to be done much before? Yes, before commercialization and filing a patent application, there are a few essential steps to be performed before meeting your attorney.

Following are the most crucial issues to be considered by an inventor to help him in enhancing quality of research and file patent application in a cost-effective manner:

1.       Prior art search: Get a thorough prior art search done right in the beginning when you get an idea. The scope of the search is not only the granted patents but also patent applications that are published or paper publication. The search, often done globally using various paid or unpaid databases, helps to identify the closest and the most relevant patents/patent application that would help you to assess the weight and commercial value of your invention. Prior art search works as a strong base not only to assess novelty of the invention, but, at later stages, it also helps in drafting of the patent application. Prior art search is an essential and crucial step to give shape to your idea and hence it’s a good idea to take professional help to get the search done.

2.       Maintain confidentiality: Inventors often are extremely passionate and enthusiastic about their invention. Having invented something feels great and one feels like disclosing it to the world. But stop! It is strictly essential to maintain confidentiality of the invention till the patent application is filed. One of the critical requirements of getting a patent is that invention shall be novel on the date of filing. Hence, never disclose, publish or make your invention available to public till you file a patent application. Additionally, do have an NDA (Non-Disclosure Agreement) with your attorney as well before initiating discussion on filing patent application.

 A classic example is when Archimedes solved the problem of checking the purity of a gold crown without damaging the crown. While taking a bath, he noticed that the level of the water in the tub rose as he got in, and realized that this effect could be used to determine the volume of the crown. Archimedes then ran in the street naked, so excited by his discovery that he had forgotten to dress, crying "Eureka!"

3.       Documentation: Documentation of an invention is extremely critical. Step-wise documentations shall be done and the novel features of the invention, existing technical problem which your invention overcomes, how your invention works shall be highlighted. Explain the process or the product with drawing and\or flow diagrams. Thorough understanding of the invention by your attorney is necessary. Don’t get lazy to fill the invention disclosure form if given by your attorney in order to describe the invention systematically.

4.       Consider the cost: Understand why and in which county (ies) or jurisdiction (s) you want to file patent application. Choosing to file provisional or complete application, PCT application or convention application or filing in India based on your requirements can really help you to manage your finances and specify the timelines. Spend some time with your attorney to understand the procedure to work on the most cost-effective package.

5.       Explore options other than patent: Depending upon kind of product, don’t forget to explore other option for protection of the innovation in the form of copyrights, design or trademark.

 Being inventors is takes tremendous amount of innovation and taking invention in right direction, in right manner is imperative to protect it appropriately and reap the revenues.