When should I file a patent application
The post will focus on when to file a patent application? You have an idea and you are interested to secure patent protection; Do you need a product before filing the patent application? The post will attempt to answer these questions.
Patent is a legal right given by a national government to an inventor in exchange for a disclosure of the invention to the national government. The inventor enjoys a monopoly of the patented invention for a limited period of time and the national government attempts to establish an innovative culture in the society through the disclosure. The inventor may reap benefits from the patent through commercialization of the patent rights or manufacturing a product including the features claimed in the patent. The inventor must realize that the manufactured product should not infringe third party’s intellectual property rights.
In this competitive world, everyone competes with other to gain benefits from an existing framework in the society. Inventors too are competitors of each other in finding out a solution for a problem.
Therefore, a key challenge to the national governments is: How will the national government decide on providing exclusive rights to mutually competing inventors who have worked on a similar problem and their respective works have resulted into substantial similar inventions?
First to file and first to invent Systems
Logically, an inventor who invented first should get a patent on the invention. This logic was followed till 2013 in United states of America where a person who invented first is only eligible for the patent protection. This logic morally sounds great. In this system (first to invent), the inventor was required to maintain records which could assist him in establishing that he was the first inventor and entitled to receive the patent in this competitive world.
Currently, most of the countries including United states of America use a first to file system where an inventor who has first filed the patent application will be entitled to the patent.
Thus attaining the filing date prior to your competitor is one of the crucial strategic steps for inventors interested in building IP assets.
Sufficiency of Disclosure
Another side of the coin is the sufficiency of the disclosure. Next step is to understand when is the right time to file a patent application. In the race of first to file system stage should we simply file the patent application with minimum disclosure? How can I fulfill the sufficiency of disclosure requirement?
Let us focus on few scenarios:
Scenario 1: I have a wonderful idea on a battery which can store natural electricity. Should I file the patent application and secure my filing date with the national patent office? Can disclosure of the idea amount to the sufficiency of the disclosure?
Scenario 2: I have started manufacturing a battery which is yet to be tested on technical and operational parameters. Is this the right time to file the patent application?
Scenario 3: I am an inventor and need to validate my idea with industry experts. However, I am afraid that the industry experts may develop the product without my involvement? Should I file a patent application without validation of my idea?
Scenario 4: My prototype is ready and waiting for an investor. Should I file the patent application?
Scenario 5: I have sufficient knowledge of my domain and I believe if I share the idea, any other person can build the product. Should I file the patent application?
When to file a patent application
There can be various other scenarios which may generate confusion regarding the filing of the patent application. For simple scenarios (e.g., 2 & 4), the answer can be obvious to file the patent; whereas for complex scenarios (e.g., 1, 3 and 5) you may need multiple rounds of discussion with your IPR consultant to devise a strategy to secure the patent.
We must keep in mind that earlier filing and sufficiency of the disclosure poses a challenge in crafting the strategy for the filing the patent application. As an inventor, we need to strike a balance between these two and then file the patent application.
Thank you for patiently observing the post.
For a more specific discussion on your strategy, we are just an email or a call away.
Intellectual Property Attorneys