Patenting Your Invention – Five Common Mistakes to Avoid

A road to gaining significant profits by commercializing an invention begins with filing of a patent application for obtaining a patent. There are many common mistakes, which an applicant commits that may lead to undesirable consequences such as failure to obtain the patent even if the invention has potential to bring high monetary value to the applicant. Some of the common mistakes that an applicant can avoid for smooth flow of patenting process are:

Mistake 1: Delay in Filing Patent Application

Many countries have opted for a first-to-file system. Under this system, the right to grant of a patent for an invention rests with first person who files a patent application for that invention regardless of the date on which actual invention came into existence. For instance, if a person A and a person B develop same invention, the person who files the patent application first would be entitled to obtain patent for that invention. Thus, person B might have developed the invention after person A, however, person B would still be entitled to obtain a patent if he/she files a patent application before person A. Thus, it becomes important to file the patent application at the earliest possibility.

Mistake 2: Disclosing the Invention before Filing a Patent Application

Generally, a patent application should be filed before the underlying invention is disclosed to public. If the invention has been disclosed prior to filing a patent application, the disclosure of the invention can act as a prior art to the patent application and can hit non-obviousness/inventive-step and novelty requirements for grant of the patent application. Although, some jurisdictions provide grace periods under which if a patent application is filed within a certain time after disclosure of the invention, then such disclosure does not act as a prior art. However, such grace periods are not uniform across various jurisdictions. Therefore, it is better not to disclose the invention until the patent application is filed.

Further, various applicants try to analyze viability of their invention in the commercial market, and apply for a patent when their invention start bringing monetary profits. However, this approach should be avoided as any disclosure before filing of the patent application can be considered as a prior art and may lead to loss of patent rights. Thus, applicants should first file a patent application and may then take further steps for commercialization of the invention. Also, to save priority in order to avoid losing patent rights, the applicant can take advantage of filing a provisional application when the invention is developed to a certain threshold, and once the market analysis is complete the applicant can go for filing a complete specification (within 12 months of filing of the provisional application).

Thus, an applicant should always avoid disclosing the invention in public, for example, through publication, presentation, etc. or commercializing the invention before filing a patent application. In case the disclosure is extremely necessary, the applicant must enter into a non-disclosure agreement or a confidentiality agreement prior to the said disclosure.

Mistake 3: Not Conducting Patentability Search

patentability search is conducted before filing a patent application to determine whether a similar or identical invention already exists. While conducting a patentability search, certain prior arts are identified and every element of the invention is co-related to the identified prior arts to form an opinion on novelty, non-obviousness/inventive step and industrial applicability of the invention in order to determine viability to obtain a patent. A patentability search can save both money and time of the applicant in case the invention is not viable and that he/she would otherwise spend in the patent process.

Mistake 4: Filing Defective Provisional Application

A provisional application provides a foundation to an enforceable patent and provides a convenient way to obtain a priority date for an invention. Though provisional applications have less legal requirements, such applications must completely disclose the invention in order to obtain a useful priority date. A hastily drafted provisional application can omit essential elements of an invention, which may lead to loss of priority for novel/inventive elements when complete specification for the invention is filed. A provisional application can be defective in case underlying description fails to adequately support claims of the complete/non-provisional application. Thus, the provisional patent application should be filed only when the invention is developed to a substantial level and should be comprehensive to include all details regarding the invention so as to save priority for the complete/non-provisional application.

Mistake 5: Inadequately Describing the Invention in Complete Application

Many a times due to lack of awareness and knowledge, applicants fail to meet legal requirements while filing a patent application. A complete/non-provisional application must clearly and sufficiently describe the invention such that any person skilled in the art can carry out the invention. While drafting a patent application, explaining structural invention is more important than explaining functionality, thus, components of the invention, their configuration and their structure must be described clearly and completely. Also, any ambiguity in the patent draft and use language which is non-specific should be avoided.

Filling a patent application by the inventor himself can be a difficult task, thereby making the process prone to many common mistakes. Therefore, for a seamless and easy patent process taking help of a professional is highly recommended.

Author: Ms. Prigya Arora, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at prigya@iiprd.com.

Leave a Reply