1. Definition of a patent
A patent is a right granted to inventors by the government of a sovereign state to exclude others from using, producing, offering for sale and actually selling an invention. Patents cover various types of inventions such as methods, machines, compositions of matter and even (especially in the United States) software and plant patents.
The patenting of business models and mathematic formulas as well as logic concepts is not possible. A patent expires 20 years from the day of first filing. Its structure is title, abstract, claims and description. It is important to know that only what is written in the claims can be protected.
2. Where can I get a patent?
First of all there are three basic requirements to get a patent: Your invention defined in the patent’s claims needs to be
- Nonobvious to an ordinary skilled person
- Commercially applicable
If all three requirements still hold, typically inventors look for a patent attorney that supports them during the patent application process. Together with a patent attorney, you decide in what countries you want to be protected. Note, that rights provided by a patent are only enforceable in the country or countries issuing the patent. Most of the inventors and applicants apply in countries which represent their main markets. It also gets very costly if you want to apply for a patent in every country of the world.
3. How can I prepare before going to a patent attorney?
When a patent application is filed, the patent office will conduct a search or prior patents and prior non-patent literature to check whether the invention is really new. Inventors should do a similar patentability search upfront to better evaluate the probability to obtain a patent protection for their invention and to evaluate the costs. It could also be important to check whether your invention might infringe someone else’s patent (Freedom-to-operate search). This is extremely important if still a lot of R&D costs are involved after applying for the patent. Tools like ours support skilled and unskilled patent researchers to find critical prior art more quickly.
4. What if I need more help for my patent search?
There are professional patent researchers that can support you with your patent search. Normally a patent researcher charges by the hour. The price strongly depends on where you find your researcher. In Western countries, prior art searches start at 300 EUR while some Indian companies provide searches for 150 EUR. For a good quality search, you can expect up to 1,000 EUR and the more effort you need and the deeper you want them to search the more expensive it gets. In the pharmaceutical industry, freedom-to-operate searches can easily reach 100,000 EUR.
5. How can I find a patent attorney?
Users frequently ask us where to find a good patent attorney. The question is not trivial since a patent process can be the start of a long business relationship. Investing your time to search for a patent attorney with proven credentials and long expertise in the field is crucial. Here are some tips:
Get a recommendation from a lawyer, inventor or company you trust. If you don´t know anyone in the industry, an alternative is to access the available online records at the patent office’s websites. Most of them provide a searchable database of registered patent attorneys. You can also use sites as www.patent-pilot.com and www.anwalt.de.
Further ways are to get advice from inventor clubs, inventor associations or referrals from intellectual property law associations, chambers of patent attorneys and bar associations.
6. Once I have a patent, do I now have the right to sell my product?
A patent is a right granted to the owner of an invention that prevents others from exploiting the invention during a limited period. As the patent right is purely exclusionary, you have the right to stop others from making marketing, selling, or importing your invention. As contradictory as it may seem, a patent does not confer you the right to sell your product.
It is not unusual that improved and patented products infringe prior patents. Consequently, before carrying out a business activity, it is important to conduct a FTO search to identify whether third parties have any rights that you may infringe.
7. How do I know that someone infringes my patent?
Claims are the part of the patent application where the inventor defines what the invention is and what it can do. Since the claims determine the legal scope of a patent it is necessary to examine them carefully to identify patent infringement.
For infringement to exist each limitation of the claim must exist in the accused product or process. However, even if the claims don’t literally match each other, infringement may still happen under the “doctrine of equivalents”. According to this doctrine, an infringement may occur if the functionality remains the same and only insubstantial changes distinguish the claims of both patents.
However, frequently the infringing product or device does not have a patent. In this case, the court must see the product in order to decide whether infringement has taken place.
8. Someone claims I infringe his patent, what is the best strategy now?
Faced with this situation, there are several ways to proceed. The most common defence is to deny that the patent infringes any of the patent claims. Besides, the defendant may present convincing evidence that the accusing patent is invalid. To prove patent invalidity, it is vital to find prior art that shows that the invention is not new or non-obvious. If the invalidity search is successful, the patent can be revoked even after it has been granted.
A further strategy could imply negotiating with the patent owner for settlement of the lawsuit. This would avoid the high costs of litigation and overcome the cloud of uncertainty that the sued party is facing.
9. I want to license my patent, how can I do that?
To start, it is necessary to identify potential licensees. These should be companies working in the same technology field as well as with established marketing channels and manufacturing experience. To easily identify the most active companies in a specific sector you can use the octimine platform.
Once you have found a potential licensee, it is time to prepare for the negotiation rounds. It is imperative that the firms’ objectives are perfectly set so that the Patent Licensing Agreement clearly defines the scope of the rights you want to license. This agreement determines the legally binding terms upon which the third party may exercise patent rights without being liable for infringement, - normally in exchange for royalty payments. Please note that every agreement depends on the specific situation of the parties and must therefore be adapted to their own particular needs.
10. What other ways are there to protect my invention?
If you have decided not to protect your invention with a patent, here we provide you with four alternative ways to keep your idea safe:
Filing a utility model application is a fast way to enjoy from fully enforceable IP rights. Since the novelty and inventive step conditions are generally not reviewed by patent examiners, the requirements to register a utility model tend to be less rigorous.
Alternatively, trademark rights will protect the brand name of your product. They will essentially give you the legal rights to prevent others from copying or otherwise taking advantage of the goodwill of your brand or company name.
A further possible strategy is the so known “defensive publishing”. By disclosing the description and/or drawing of your invention it enters the public domain and automatically becomes prior art. This prevents third parties from obtaining a patent on the product or process in question.
Lastly, short product development cycles may provide you a unique competitive advantage in the market place. By shortening the planning loop in the product development cycle, you can rapidly develop a superior alternative to your competitors. Before rivals have time to emerge you will have already introduced new modernized products which replace the old ones.
This is no legal advice. Please contact a patent attorney for further questions.