Patenting

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Zur

surrealistic mad cow
Jul 8, 2002
11,708
8
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Just curious, has anyone read anything patenting or has a contact that could say a few things on the subject. Thanks.

P.S: This is serious thread.
 

M.A.D.X.W

Active Member
Aug 24, 2008
4,486
5
38
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.
 

M.A.D.X.W

Active Member
Aug 24, 2008
4,486
5
38
The European Patent Office (EPO)
Because there was considerable duplication in having Patent Offices in several countries examine the same invention, the European Patent Office was established in Munich to deal with patent applications for most European countries. It is not a European Union body. It includes a mixture of EU and non-EU countries. Having one office however means one can avoid the problems and expense of duplication and translation costs at every stage. Patent applications in the European Patent Office can be filed in one of three major European languages, English, French or German. The EPO will deal with the applicant in the language chosen and this postpones translation costs until such time as the patent is granted. The applicant must designate the countries in which final patent protection is sought. After examination the EPO grants a European patent which the applicant then converts into national patents in each of the designated countries where protection is definitely required. At this stage the applicant must provide a translation of the granted patent so that people in those countries will know what is covered.

The Community Patent
The European patent should not be confused with the concept of a Community Patent covering the whole European Union. Proposals for such a patent have existed for some time. Progress on it has been very slow however because of the legal ramifications. In some countries it has constitutional implications. Ireland in fact addressed these in a referendum but other countries have not. Whereas a European Patent Office application becomes a "bundle" of national patents which must be separately litigated in each country a Community Patent implies one single patent which would apply right throughout the Community. Litigation in one country would have an affect in all the other countries of the Community.


The Patent Co Operation Treaty (PCT)
Ireland is a party to this treaty as are virtually all the industrialised countries in the world and several underdeveloped ones. Although there is no such thing as a single worldwide patent, the PCT allows one to file a single application in one country and designate about 80 other countries in which one intends to seek patent protection. In practical terms it can provide an inventor with a way of delaying decisions on patenting and major expenditure for up to about 30 months after the filing of the initial application. Thus a considerable amount of technical and commercial development can be carried out in the interim and a more informed decision taken as to whether it is worthwhile going ahead with patent applications or not. In effect the PCT approach allows one to buy time. It increases the eventual overall costs in cases where one ultimately decides to go ahead with national applications. It means though that if one decides not to go ahead one will have wasted less money than in the direct approach.

Cost of Patents
Patenting costs can differ quite substantially from one case to another. The figures given below are therefore only intended to give an idea of the orders of magnitude involved. It should also be realised that such charges are subject to VAT and thus the inventor's liability for VAT can substantially effect the costs to be paid out.
The filing of an initial patent application by a patent agent can vary depending on the complexity of the specification and whether or not the inventor wishes to seek short term patent protection in Ireland immediately. A very basic application just to establish a priority date may be filed for about €1,000 but one would normally spend more. If a short term patent is required, the cost will be greater and it may also be advisable, as indicated above, to have a patent search carried out before the application is filed. Costs of perhaps up to about €1,500-2,000 may therefore be faced in the first few months.
The question of foreign applications will arise one year after the initial application has been filed. If the inventor wishes to delay a decision, an application under the PCT (see above) can be made at a cost of about €7,000-9,000. Keeping this alive for a further eighteen months could cost up to about €4,000-5,000. At that point a decision on specific countries cannot be further delayed. Filing an application in an English speaking country (except USA) is likely to cost €2,000-2,500 but for a foreign language country one might expect to pay up to double this amount. The dollar exchange rate can bring US costs up to perhaps €3,00-4,000. If one uses the European Patent Office route one can designate all major countries in Western Europe for about €6,000-7,500.
The total basic application costs for a patent programme covering the main industrialised countries of the world (e.g. Western Europe, US Canada, Australia, Japan) would be unlikely to be less than €20,000 and would be over €25,000 if one uses the PCT route rather than a direct approach.
As explained above, once the applications are filed they go through a process of examination in each of the various Patent Offices. The costs incurred here are referred to as prosecution costs. One could expect these to come to about the same amount again as the filing costs but they would be spread over a period - normally several years.
When the patents are granted further fees relating to their publication and issue are payable. In the context of the overall costs these would not be substantial but a major cost occurs in relation to the European Patent. To actually bring this into force in any of the designated countries involves the translation of the specification into the national language and lodging it in the national Patent Office in each case. If one wishes to do this for all of Western Europe the fees could amount to about €35,000-40,000 or even more.
It should also be borne in mind that annual renewal fees are payable to keep the patents in force in each country. These amount typically to several hundred euro per country per annum. In some countries they increase gradually as the lifetime of the patent progresses.
It can be seen therefore that a major patent programme covering the main industrialised countries of the world can easily involve expenditure of €70,000 or more. This is spread over the four to five years that typically elapses from the time of the first application to actually having granted patents. Several thousand euro per annum are then required to keep them in force.
If one is faced with infringement of ones patent and wishes to sue the infringer even more substantial fees will be involved. It can cost up to €150,000 in legal fees even to get a case to court. The are examples of major court actions where the legal fees ran into seven figure sums.

Patent Searches
Before spending substantial sums on patenting it is normally essential to carry out a patent search to check on the novelty and inventiveness of an invention. The fact that a particular product may not be on the market is no clear indication that it has not been invented. There are many inventions for which patent applications are filed but which never make it to commercial production. They remain however in the patent literature as barriers to a later inventor claiming to have invented the same thing.
Enterprise Ireland, through the Intellectual Property Assistance Scheme or through its general Technical Information Services, can carry out limited patent searches on computerised international databases. These are by no means exhaustive but can provide a useful quick look at the literature at an early stage of a project. Most patent agents can provide a similar service and will of course also be able to give specialised advice on the items found and their relevance in patenting terms to the invention in question.
As a project proceeds and particularly if a major foreign patent programme is envisaged, it is normal to have a more exhaustive search carried out through a patent agent using a specialist patent searching agency. This would be focused on the precise claims that are planned for the patent application.
The costs of patent searches can vary from perhaps a few hundred euro for a limited search to a few thousand or more for an exhaustive one. What one chooses to do must be decided in the context of the stage of development of the project and other planned expenditure on it. For example if only a limited patent programme covering a few countries is planned, it may be more cost efficient to go ahead with the applications and see what the official search from the Patent Office discloses.

Ownership Rights to an Invention
If an invention is made by an employee in the course of normal duties for an employer, the invention is considered to belong to the employer, and not to the employee. Examples of this would be an invention made by a development engineer in an engineering company, or a researcher working in a university. Alternatively, if the invention is made by an employee not in the normal course of his/her duties, but it is considered that he/she is employed in a position where he/she is expected to further the interests of the employer, then the invention will belong to the employer. This means for example that an invention made by the managing director of a company would probably belong to the company but if the invention were made by a shop floor worker, it would probably belong to the inventor. The rights conferred by the patent system are conferred on the applicant for the patent. In some cases the applicant is also the inventor, but if the applicant is a company, the inventor must usually formally assign his/her rights to the company authorising it to make the patent application.
Ownership rights vary from case to case and if there is any doubt, early reference to a patent agent is recommended so as to avoid the possibility of disputes at a later stage.
It is important that the true inventor or inventors should be named on the patent application. Any person who has made a contribution of a technical nature to the invention must be included as a joint inventor. Failure to include any such person could result in the patent being declared invalid at a later stage. Being named as an inventor does not necessarily give ownership rights. The patent belongs to the applicant. If the applicant is a company, it can make whatever arrangements are needed with the inventors.
Research Contracts
There are many grant schemes available for funding research projects and some of these may apply conditions relating to the patenting or ownership of any results capable of commercial exploitation. People signing research contracts should study them carefully and make sure that they understand the implications of any such conditions. If they are in any doubt, they should seek clarification from the grant giving organisation.
If a researcher is in doubt about the commercial implications of his/her research, advice should be sought from the college industrial liaison officer, from a patent agent or from Enterprise Ireland before any disclosure takes place.
In the context of Enterprise Ireland advice it is important to realise that although many of the research grant schemes are in fact run by Enterprise Ireland, it should be understood that the Intellectual Property Assistance Scheme is a separate activity and requires a separate approach by the inventor/researcher.

Approaching a Company with an Invention
Inventors tend to have a low success rate in selling or licensing their inventions to companies. To some extent, this is a reflection of the quality of some of the inventions and of the inflated ideas that the inventors have of their value. But it is also a reflection on the companies and the way that they deal with inventors.
Many companies do not appreciate the time constraints placed on an inventor by the patent system. Consequently, when they receive a disclosure of an invention from an inventor, they do not give the assessment of the invention the priority which the inventor would like. The result is that the inventor can be left waiting for a long time before receiving a decision. In some cases, the inventor is given some initial encouragement by the firm and is therefore prepared to wait in the hope that there will be a successful outcome. If the firm eventually turns down the invention, the inventor is often left without sufficient time or finance to secure international patent rights.
When an inventor makes a disclosure, he is offering the company something which may be of value to that company. It is important that the company recognises its moral obligations to deal fairly and speedily with the inventor. If the company is not interested it should tell the inventor straight away. If it is interested, it should discuss with the inventor whether or not it should have the exclusive right to carry out a detailed examination of the invention before the inventor approaches anybody else. The company should be prepared to make a small payment to the inventor for the option to examine the invention exclusively for an extended period. The inventor must be compensated for the loss of time and flexibility in negotiations with other companies, which this concession entails. A company should appreciate that by co-operating with the inventor, they can both obtain the benefit of a strong position in the market that the grant of patent rights will give them. Companies should be aware of the fact that with the removal of trade barriers under international trade agreements, patent rights remain a powerful tool to compete against competition from outside the country.
Some companies, particularly small ones, seem to be at a loss to know what to do when they receive an offer to participate in the commercial exploitation of an invention. It is essential that the company should have somebody assigned the sole responsibility of checking out inventions and new product ideas which come from inside or outside the company. It has been found that an executive in the Marketing Department with access to technical/financial advice within the company is probably the best person to carry out this work. Companies evaluating a patent application would be well advised to employ a patent agent. As indicated above, a patent search would help to predict the likelihood of obtaining patent protection and assess the strength of that protection in advance. The cost of such a patent search (see above) might be well justified if the company found that the invention was not novel and that a patent was not likely to be obtained. This could save the company from making a substantial investment in patents, development, stocks etc. which would not be justified if the invention could not command a monopoly position.
The company must also be very careful to avoid infringing any other existing patents which are in force. The patent search described above might show the company that the invention offered to them actually infringes patents in force and that by investing in this invention they might leave themselves open to legal action
The foregoing refers mainly to dealing with inventors from outside the company, but many of the comments apply equally well to a company assessing an invention which comes from an employee within the company. It is important for a company to have a standard procedure for assessing inventions from inside the company, and some policy with regard to motivating and rewarding employees so that they will be encouraged to come up with new ideas which would benefit the company.

Tax Relief
An incentive for inventors is provided by Section 34 of the Finance Act 1973. This section provides that any income from a qualifying patent shall be exempt from income, or corporation tax. In general, the exemption is taken to apply to royalty income and the definition of a qualifying patent is a patent relating to an invention which has been invented within the State. There have been various amendments to the original provision which have introduced restrictions on who can avail of the exemption. It is important therefore that professional tax advice be obtained.
Tax exemption is available not only to inventors, but also to the owners of the qualifying patent. This provides an incentive whereby investors who wish to invest in research can purchase shares in a patent holding company which holds the qualifying patent, and can then benefit from the licensing of the invention to suitable manufacturers whether in Ireland or abroad.
Professional Advice
The area of patenting and commercial exploitation of inventions is an extremely complex one, and it is easy to make expensive mistakes if one is not properly advised. A document such as this must of necessity make a number of simplifications and generalisations in order to deal with this subject within a few pages. It must be emphasised again that patenting and arranging commercial exploitation through manufacture or licensing require particular skills and training, and that the private inventor is unlikely to be able to maximise the benefit from an invention without some professional advice. Patent agents can provide advice on patenting and can prepare and file patent specifications. They also file foreign patent applications through a network of foreign patent agents throughout the world. Some of the patent agents and some of the larger legal firms have experience of licensing and can offer legal services in this area. There are also licensing consultants. General advice on patenting and the exploitation of inventions and in some cases funding for patent programmes is available from the Intellectual Property Unit at Enterprise Ireland under the Intellectual Property Assistance Scheme.

Enterprise Ireland Intellectual Property Assistance Scheme
Under the various Acts of the Oireachtas which established Enterprise Ireland it is empowered to assist with inventions. Details of the Scheme and an Application Form are provided with this advisory document. Enterprise Ireland can provide advice on the protection, technical development and commercialisation of inventions. In certain cases Enterprise Ireland can give financial assistance with patenting expenses and can assist in finding suitable manufacturers. Enterprise Ireland must satisfy itself that the invention is capable of patent protection, is technically feasible and that there are plans for its commercial exploitation. Once Enterprise Ireland is satisfied that an invention merits its support, an offer is made to the inventor or company promoting the invention, whereby Enterprise Ireland agrees to provide funding for patents in return for a share of the royalty income resulting from the successful exploitation of the invention. The share of income depends on the degree of support offered and the sales potential of the product. If the invention is unsuccessful, the investment by Enterprise Ireland is written off.

Other Services
There are a large number of organisations who can assist inventors in carrying out the commercial exploitation of their invention. In addition to Enterprise Ireland, Shannon Development and Udaras na Gaeltachta can assist those who wish to set up manufacturing companies. The Business Innovation Centres can give a wide range of advice and encouragement. The County Enterprise Boards can provide local funding of the initial stages of a project. There are many other local enterprise

groups, trust funds and finance houses. One should enquire locally about the services available from each.
It must always be realised however that the functions of these bodies are to provide support. They cannot ever be a complete substitute for the inventor. It is not necessarily important for the inventor to have a great deal of resources or expertise. What is important is that the inventor adopts a business like approach to the project and uses the support services efficiently. The ability to do this can often be more important than the technical merits of the invention.
That's pretty much all I know about that.
 

Balton

The Beast of Worship
Mar 6, 2001
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if you're serious about whatever it is you want to do go get a lawyer specialised in patent rights specialised on whatever region you're aiming for.
 

Zur

surrealistic mad cow
Jul 8, 2002
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Hey, that took me a long time to type :mad:

My eyes hurt but thanks.

if you're serious about whatever it is you want to do go get a lawyer specialised in patent rights specialised on whatever region you're aiming for.

Will do when the time comes. I heard a figure of something like 300 euros just to see if an idea is already covered and if it can be patented.
 
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Zur

surrealistic mad cow
Jul 8, 2002
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make sure to sue everyone that trys to copy your idea with ridiculously high ammounts of money.

Will do. Here's Sue with her two friends, Evelyne and Cindy.

cindy_sue_et_evelyne_visuel_detail_galerie_image.jpg
 

Zur

surrealistic mad cow
Jul 8, 2002
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Btw, what does itt mean ? I'm behind on the Internet acronyms.