Tuesday, December 11, 2012

Checklist: Filing for a patent

Filing for a patent is a very exciting time for any organization or an individual inventor. Invention results from an innovative mind and putting it into prototype may require long hours of hard work and of course, funds and resources to see the process through to its completion. For individual inventor, it is a pleasure to be called as an inventor, whereas for a business organization, there may be various reasons to file for a patent. Some of the reasons for it could be filing for a patent may add to the number of applications filed in a given financial year or it might be for securing invention before it becomes publicly known or before commencing the public relations activities / a new product launch or commercialization or often getting application number before talking to investors especially in case of start-ups.

Though there are several factors which determine purpose and use of filing for a patent, in order to actually realise benefits of filing a patent application it is critical to analyse following prime factors:

Is invention really worth a patent?

If invention is not in market, often inventors feel that it is novel and there is no need to perform patent search. Patents are a great source of technical information and it makes lots of sense to check them to assess state of art before filing for a patent. Patent law expects invention to be novel, inventive and industrially useful, hence, before proceeding with filing a patent application, make sure that invention fulfils these criteria. Though patent officers are final authorities to decide on patentibility of the invention but still such assessment of patentibility can certainly be done with help of a patent attorney who knows subject matter well. Even if the search reveals that invention is not novel, results of a patent search gives you fairly a good idea and roadmap on how much is already done by others and how to develop your invention further.

Provisional or complete application

Provisional application shall be filed if invention is at the stage of idea or if it is critical to claim earliest priority date or if funds need to be arranged in short period of time. However, if experimental results or prototype is ready, it is good idea to file complete application to save cost of drafting provisional application. Often patent attorney will take longer time to draft complete application and therefore, if date of filing is critical, one may opt for provisional application.
Patents are a great source of technical information and it makes lots of sense to check them to assess state of art before filing for a patent.”
Where to file?
It is worth noting that if inventor is resident of India, he shall either file application first in India and wait for 6 weeks before foreign filing or take permission from Indian Patent Office for foreign filing. If one fails to do so, he may be punishable with imprisonment for a term which may extend to two years, or with fine, or with both. For foreign filing of patent application, one may select either filing PCT application or convention application. However, countries where the patent application shall be filed shall be selected very carefully and one shall file only in the countries where there is a market. Filing without reason in undesired jurisdictions results in wastage of money and time.
Commercialization option
Work out on commercialization options as soon as you file application because technology is growing really fast and losing upon the time may not fetch desired attention in the market. You may either opt for commercialising on your own in case you have capacity and willingness to manufacture and sale invention or transfer your rights to someone who has capacity to commercialise your invention. You may transfer your rights by means of license or assignment that shall be in writing and executed in the form of a valid deed.
Is it safe to commercialise?
I am sure most of patent practitioner will agree with me that it is really tough to convince and communicate to the inventors that after filing for a patent, when they actually plan to launch the product in market, it is necessary to check if they are not infringing third party (ies) intellectual property rights. Clearance search, also called as freedom-to-operate search is extremely necessary to minimise risk of infringement of third party (ies) patent rights upon product launch.
The points listed above are generic and provides only an overview but there are several factors that govern worth and market success of the invention and it shall be worked out on case by case basis.

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