I learned allot about patents and crap when my sister was starting her company basically a patent is a contract between the inventor or applicant for the patent and the State, whereby the inventor or applicant gets a monopoly from the State for a certain period in return for disclosing full details of the invention. The patent system thus ensures that information on new inventions is made available for eventual public use so as to encourage technical and economic development and discourage secrecy.
If an inventor or company has an invention which they consider to be novel and inventive they may apply for a patent. This may be granted only after a detailed examination by a patent office. Once the patent is granted the inventor or applicant has the sole right to make, use or sell the invention for a limited period. This period is usually twenty years.
The patent system is not without its pitfalls of course. What is perhaps the most serious of these occurs at the outset and is the one into which many if not most private inventors and indeed some companies fall. Once a patent application is filed, one has in effect only twelve months before serious decisions have to be taken about the precise definition of what one is trying to protect and in particular the number of countries in which one wishes to obtain patent protection. Such decisions involve substantial expenditure. Twelve months may seem like a long time but in pursuing the development and commercialisation of an invention, an inventor has to involve other people. The timescale by which things happen is not therefore totally within the inventor's control.
In Enterprise Ireland's experience most inventors find that this deadline arises before they are ready. It is the factor that causes probably the biggest problems for users of the patent system. It is very important therefore not to rush into filing a patent application before one is certain that one needs to do so. This point is returned to later in this document.
There can also be confusion about what exactly can be protected by the patent system. Patents can only be applied to inventions. These usually have an industrial dimension. An invention is normally a new product which involves a new principle of operation or an improvement to an old principle. Alternatively it may refer to a new or improved industrial process. Things which do not involve manufacture are not usually considered to be inventions. For example, a new scientific theory or a new surgical procedure would not be considered to be patentable for this reason.
Other creative works are protected in other ways. Copyright is used to protect literary and artistic works but also covers most printed matter including drawings and computer programmes. If the shape of the product has been designed to make it look aesthetically pleasing, the design can be registered with the Patent Office. Trademarks or distinctive names for products are also registrable with that office.
A lot of minor improvements, and pieces of useful industrial information are simply protected by keeping them secret. This is called secret know-how.
Novelty and Inventiveness
In order to be suitable for patenting, an invention must be novel and inventive. An invention is considered to be novel if it has not been disclosed to the public at the time that the patent application was made. As long as the date of the patent application precedes any disclosure of details of the invention to the public, the invention can be validly patented. If however, details of the invention have been disclosed to the public before applying for a patent, then the invention is no longer considered to be novel in a patenting sense and it will not be possible to protect it validly through the patent system.
It is important to be aware of the danger of premature disclosure of details of an invention. Even after a patent application has been filed, details of the invention should only be disclosed as part of a planned programme of commercial exploitation.
How one should go about this is discussed in more detail below.
Another requirement for a valid patent is inventiveness. This means that the invention must contain an inventive step. This can be the most difficult thing to show. A patent examiner may decide that the invention is obvious i.e. that somebody knowledgeable in the subject area, when familiarised with all earlier patents or other technology in the area, would have immediately been led to the same conclusion.
Short Term (Petty) Patents
In Ireland and in some other countries (but not all) there is a petty patent system which can be used to protect inventions with a low level of inventiveness. This is a system of granting short term patents of six to ten years duration (ten in Ireland) for such inventions. A short term patent is granted on the basis of a much less detailed examination of the application than is the case for a full term patent and within a few months of the application being filed. At first sight this appears to be a very good system for inventors with limited finance who only want limited protection. A short term patent is obtained much more quickly and cheaply than a full patent. The system does have its drawbacks however and one should be aware of these.
The short term patent does not provide anything like the same level of protection as the full term examined one. In particular no searching of the patent literature has been carried out to establish if the subject matter is genuinely novel and contains an inventive step. The inventor therefore has no real indication as to whether or not the patent would stand up in a court action. Also, the system is unsuitable for an inventor in a very competitive situation who wants to keep details of the invention secret for the longest possible time. Short term patents are published within a few months of the application being made. Details of a full term patent application on the other hand will not be made available to the public for eighteen months after the application date.
The system does however allow an inventor to say that his/her invention is patented and this has a deterrent value. A short term application can also be used as a priority document for foreign applications.
Commercialisation of
Inventions - Some General Points
Many inventors feel that filing a patent application is the most important and first thing they must do once they have an idea. This is rarely the case. Patenting an invention is not the only consideration and rushing to file an application may actually be the wrong thing to do first.
Patents are of no value unless the commercial worth of the product or technology can be demonstrated and exploited. Many patentable inventions have failed not because they didn't work, or because they had been invented before, but because the inventor was unable to exploit them commercially. Inventing is increasingly being seen as a business. You must invest in the business if you wish to make a return, and management and marketing skills are every bit as important as technical skills. If the inventor does not have all the skills required, it may be necessary to put together a team or partnership to exploit the project or to license the invention to an existing company who already has related products.
An inventor should never underestimate the difficulties in persuading others to become involved in the development and commercialisation in a committed way. In 1815 Ralph Waldo Emerson is quoted as having said "If a man preach a better sermon, write a better book or make a better mousetrap than his neighbour, though he build his house in the woods, the world will make a beaten path to his door". Regrettably what may have been true in 1815 is certainly not true now. If a person invents something today, it is not an easy task to get a company to take it up. This is because of the enormous amount of money being spent by companies on R&D and marketing of new products. Most companies are committed to their own carefully planned development programmes and it is very hard to get them to pay serious attention to any ideas coming from outside.
If one does successfully commercialise an invention however the rewards can be substantial. A number of successful companies in Ireland started as a result of good inventions and are now creating employment in the country. Their patents protect them against copied products home or imported. This is an important factor in present day international trade. Most other traditionally used barriers to trade are being removed in the interests of fair competition. Patents are one of the few mechanisms that companies can legally use to protect their market share. Having foreign patents also allows Irish companies to protect their products in export markets.
Where a product is unsuitable for export because of distance, cost or other factors, a licensing strategy can be used. The Irish company can use the patents to license the manufacturing/marketing rights for their invention to a foreign manufacturer. In return they receive a royalty which increases their profits. Licensing for both the home and export markets to Irish and/or foreign companies is also the appropriate strategy for inventions made by non-manufacturing companies or by universities and colleges.
It is possible to succeed therefore and the payback can be considerable. Apart from the overall economic benefits there is a tax incentive for Irish inventors which means that income from their inventions is exempt from income tax once a granted patent is obtained.
To succeed, an inventor does not have to have a great deal of business or technical expertise. He/she must however adopt a businesslike approach to the project. The first thing is to realise that there are several stages in the inventive process. It is vital to realise what stage one is at and what one needs to do next.
The stages of development of a successful invention are:
identification of a problem that needs to be solved.
inventing a solution to the problem which works .
developing a prototype or being able to demonstrate
the invention to prove how it works .
filing a patent application to protect the invention so that it can be disclosed to other people.
arranging the manufacturing and marketing of the invention either through one's own company or through licensing.
Each stage requires its own particular expertise and
resources. It is essential that the early stages are satisfactorily completed before moving on. Experience shows that taking short cuts does not pay. For example, it is hard to get investors or potential licensees to appreciate the benefits of a particular invention if the prototype is very crude and does not work properly. Similarly there is little point in filing a patent application until one is satisfied that the invention can be shown to work. There can be some overlap between the last two stages however. If it is possible to make some progress with manufacturing and marketing without compromising the patent position, then one should do this. As mentioned elsewhere, very often the later one files the patent application the better.
Strategies for Development and Commercial Exploitation
The first thing that an inventor should do is to decide how many of these stages he/she is realistically likely to be able to successfully complete with his/her own expertise and resources (time, finance, etc.). In this context it is important to realise that until one reaches the second stage listed above, one can not really claim to have invented something. It is not an invention to simply identify a problem and suggest ways in which it might be solved. It must be possible to demonstrate, at least on paper, that the proposed solution would actually work. It is not sufficient to have an idea. If one cannot progress the idea technically oneself, one may have to involve another person with the required expertise. If this person is merely asked for some specific technical advice or given precise instructions to carry out certain technical work, then the eventual invention would normally remain the property of the person with the original idea. If however the second person makes a positive technical contribution to the solution of the identified problem then he/she may well have a case to be at least a joint inventor. In such cases essentially "he who pays the piper calls the tune". If an individual pays for work to be done then he can normally lay claim to the results.
The important thing is that whether there is a payment or not, such matters should always be covered by some form of simple written contract between the parties. This should lay down what is requested and what rights, if any, the person being asked to do the work will have when it is done.
Similarly an inventor may require finance to progress his/her idea. The only way to obtain this may be to agree with the provider that he/she will have a direct share in the invention.
In overall terms though an inventor is faced with a choice of two routes to commercialisation. The first is to become directly involved. This means setting up one's own manufacturing and marketing company or exploiting the invention through an existing company with which one is already associated. This is the situation for somebody who is already in business or wishes to establish a business based on the invention and has the finance and expertise to do so. Many people are not in this position. The other route therefore is to give over responsibility for commercialisation to another person or company. One can either sell the invention outright or license it in return for royalties based on sales. Outright sale is not normally an attractive strategy because a successful invention will always give a better return in the longer term in the form of royalties if licensed. Licensing is therefore the better strategy but, as has been mentioned above, it is not easy to get companies to take an interest in ideas submitted from outside. Generally, the type of inventions which companies are interested in are those with a significant research and development content, particularly those coming from people with an established reputation in the area such as university researchers.
Disclosing an Invention
Details of an invention should not be disclosed to outsiders until such time as a patent application has been filed. However, many people make the mistake of filing patent applications too early. Because they are afraid that somebody else may invent the same thing, they file an application as quickly as possible without having any clear plan as to what they are going to do next. They then find that many months pass before they are in a position to commercially exploit the invention, and they have not left enough time to obtain the necessary finance to cover international patent filings. In general, it is better to complete the development of the invention and file the patent application when it becomes necessary to make disclosures as part of a planned programme of commercial exploitation. If it is necessary to talk to technical specialists or others in order to obtain assistance during the development of the invention, this should be done on the basis of confidentiality. People should be informed that the information is strictly confidential and asked to sign a simple document undertaking not to disclose the information until given permission to do so.
Adopting a proper commercialization strategy involves considering all aspects at the same time, technical, commercial and legal. At the initial stages proper attention should be given to the technical aspects, but once the patent application is filed, the commercialization should proceed as quickly as possible within the limited time scale provided by the patent system. Once an application has been filed in Ireland, applications in other countries must be made within twelve months if the best protection is to be obtained. As is explained below, an international patent programme can be a very expensive business. Funding for it from either private or public sources is unlikely to be obtained unless there are definite commercial plans for the invention which are well advanced. Setting up ones own manufacturing company or identifying potential licensees and reaching agreement with them can take time. A period of longer than twelve months is usually required to complete either of these activities. Thus if one has filed ones patent application too early one will inevitably run into financial difficulties in trying to keep it going.
Another reason why it can be a mistake to file too early is that development of the invention may not be completed. Designs may change during development or other inventive features may be introduced. If the patent specification has been drafted too early it may not be possible to amend it to reflect the changes made. One can end up with a patent which does not really cover the final commercial product.
Academic Research
People carrying out academic research are frequently under pressure to publish the results of their research for academic reasons. Researchers should, at all times, bear in mind the possibility of commercial results from their research. If a researcher sees a commercial application from his or her research, it would be wise to delay publication until a patent application has been filed.
Applying for a Patent
The first step that people usually take in applying for a patent is to file a preliminary application in one country. When the application is filed, the date of application is recorded and this is called the "priority date". The first application can be quite basic and does not have to include a set of claims (see below). It is still an important document and specialist advice from a patent agent should be obtained in preparing it.
Most countries are signatories to an international convention which guarantees that the priority date of an invention filed in one country will be respected in other countries, provided an application is filed in the other countries within twelve months of the date of filing the first application. This is why the first document filed can be very important later.
The system of filing an application in one country initially can be of great benefit to inventors provided they have timed it correctly. It allows up to twelve months before foreign applications must be filed. During this time the inventor can assess the commercial prospects of the invention, carry out improvements on it, and arrange the necessary finance for international patenting and commercial exploitation through manufacture and sale. This period is also used to assess the market potential for the invention in various countries and to decide in which countries the expense of patenting is justified. Note though the comments earlier about the dangers of underestimating the time it takes to do these things and the dangers of filing too early.
Patent Specifications
The patent system is complex, and great skill is required in reducing the principle of an invention to words which will have legal effect. Patent agents have detailed knowledge of the complex procedures in the various foreign patent systems and work with other patent agents throughout the world to obtain patent protection for an invention in different countries.
A patent specification is written in a certain format which may not be immediately obvious to the casual reader. The specification usually contains a preamble which describes the background to the invention. Then comes a statement of invention which is a legal statement of the scope of the monopoly sought. This is followed by a detailed description of the invention, usually drawings or examples of how the invention is carried out. The final part of the specification includes a set of claims. These are not normally required in the preliminary application but are a vital part of the final document. A claim in this sense has nothing to do with the conventional use of the word, and does not relate to the advantages or performance of the invention. A patent claim is where the patent agent sets out the scope or extent of the monopoly which he claims on behalf of the inventor. In other words, one is claiming a territory of technology within which other people may not stray without infringing the patent. The scope of the patent is very important. One can imagine that a patent for a completely new type of engine would have a very broad scope whereas a patent for an improvement in one component of that engine might be quite limited in scope.
Examination
When patent specifications have been filed in the various countries they are examined by the patent examiners in those countries. These examiners carry out a search through previous patent specifications and other literature in order to ascertain if the invention is novel. They also look at the question of inventiveness in relation to the "prior art". As a result of the patent search, an examiner may feel that certain features of the invention have already been disclosed in previous specifications. Correspondence then ensues between the patent examiner and the patent agent until the examiner is satisfied that the claims for the patent are allowable. This can often mean an amendment or narrowing of the scope of the patent claims until the Patent Office in question is satisfied that it does not overlap the "territory of technology" claimed by previous inventors. This stage of the patenting procedure is called "prosecution" and can involve the inventor or applicant in considerable expense depending on the amount of work required to be done by the patent agent.
As part of the patent examination procedure, the specification filed by the applicant is published, usually eighteen months after the priority date. The Patent Office also publishes a list of previous patents which were found to be of relevance in the patent search. Thus, even if an inventor has not disclosed the invention in any way up to this point, the patent system itself will make a disclosure and destroy its novelty at this time. It is for this reason that inventions once disclosed cannot be the subject of subsequent patent applications either by the inventor or by anybody else.
When the Patent Office has satisfied itself concerning the scope of the claims which are to be granted, notice of allowance of the patent will be issued and the patent will be granted. In some countries (not in Ireland) there is a period however during which interested parties may oppose the granting of the patent by lodging their grounds for opposition with the Patent Office. If no one is successful in opposing the grant of the patent, the Letters Patent Document is issued and the patent comes into force.
Infringement
If anybody attempts to make, use, or sell an invention which is covered by a patent which is in force in a certain country, he or she may be sued in that country for infringement by the patentee. If infringement is proved, damages may be awarded to the owner of the patent. Patent litigation is notoriously expensive, and is not entered into lightly. The greater the commercial potential of an invention, the higher is the chance that the patent will be infringed or contested. The fact that a patent is granted does not automatically mean that the inventor is given full protection. A granted patent can in certain circumstances be invalid because certain information did not come to the attention of the patent examiner during the course of the examination. This could show, for example, that the invention was not in fact novel. A court decision may ultimately be needed before the inventor finds out whether he is protected or not.
Short term (petty) patents are not subjected to the above examination procedure. There can be a very basic examination to check that they comply with certain essential formalities but their subject matter is not examined for novelty or inventive step. They work on the principle that they are granted as an unexamined patent. If the holder subsequently wants to take an infringement action he/she must request the Patent Office to carry out a search and provide a report which can be presented in court. The court can then decide whether or not the patent is valid. In practice it is normally advisable for an inventor to commission a search in advance of filing his application. This would at least give some indication of the possible validity of the patent if it came to court.
As is explained below, infringement actions are very costly. For this reason, some inventors consider the possibility of insuring their patents against infringement. There are a small number of insurers offering patent insurance. Care must be taken in the selection of a suitable policy, as some policies which offer low premiums may not in fact offer adequate procedures for the settlement of claims.