5 ways to improve your invention protection process

Improving this process will generate better control of the commercial use of your inventions.

Protecting inventions ensures that the inventor or an enterprise employing the inventor can control the commercial use and is key to progressing research and increasing the value of an innovation and in turn, making a business more profitable. In this article we will explore five ways to improve your invention protection process.

1. Keep your invention confidential

Both patents and trade secrets require an element of confidentiality in order that the invention can be successfully protected.

Patents can be thought of as the public disclosure of an invention in return for a monopoly to prevent competitor use for up to 20 years. The first major question for determining whether an invention is patentable is ‘is it novel?’. To be novel, the invention must be new and cannot have been disclosed in the public domain in any form; this includes publications such as a product release, a research paper, any other published document; or a verbal disclosure, for example at a conference. Some countries allow grace periods for patents to be filed within a fixed time period after public disclosure, but both the UK and the European patent office have strict rules preventing a patent being granted following a public disclosure of the invention before obtaining a patent application filing date; therefore, inventions must be kept confidential prior to filing a patent application. Confidentiality can be maintained through non-disclosure agreements (NDAs), contracts or by waiting to publish or share information until after a patent application has been filed.

Trade secrets can be thought of as ‘any confidential business information which provides an enterprise a competitive edge and is unknown to others.’ Trade secrets can be any confidential information, so for example formulas, methods, programmes, techniques or processes; therefore, trade secrets can be useful if the invention cannot be reverse engineered, and you do not want to disclose the invention to the public. To maintain a trade secret, the information must only be known by a limited group of people and reasonable steps must be taken to keep it a secret. These reasonable steps can include NDAs, non-compete agreements (NCAs) or controlling the access of important documents.

2. Search for relevant prior art before filing a patent application

In addition to not disclosing your own invention before filing a patent, finding our whether someone else has disclosed the same or a very similar invention to yours can be help you determine whether to file a patent application or not. Whilst patent protection is territorial, knowledge is not, therefore relevant “prior art” (published knowledge) includes any information disclosed in any country including patents, research papers, websites, podcasts, and products.

Typically, the inventors or the technical specialists in the field may know of relevant research papers and therefore it is often useful for them to have a first look at possible prior art in the field before your patent attorney undertakes a search. Your patent attorney can also assist with reviewing key documents which have been previously identified, to determine if the key technical features of your invention are new and inventive.

3. Set up an invention harvesting process

To protect an invention, the invention must first be identified which can be easier said than done! Commercially valuable products may have a number of features which you believe are inventive and a key question for these features is whether they have involve an inventive step. An inventive step can be considered as a novel technical feature which is non-obvious in light of the prior art, and  which results in a useful technical effect.

To support invention harvesting, it can be helpful to have an invention disclosure form which is used to identify the novel technical features of the invention, the background of the invention, the inventors and any useful information around the invention. Key questions to be answered could include:

  1. What are the key technical features of the new product/method/process?
  2. What are the closest prior art documents or relevant commercial products in the field?
  3. Why are the new key technical features better than those previously disclosed in the prior art and why would it not be obvious to change the prior art features to the new product features?

It can also be helpful to discuss the workings and a specific example of your invention with your patent attorney to clearly identify the inventive aspects of your innovation to support drafting an accurate patent which can withstand prosecution.

4. Understanding of the patent process

The patent process can be long and complex and therefore understanding the steps can be key to improving your invention protection process.

Once a patent application is filed, it will go through a series of examination steps to ensure that it meets all the key requirements of a patent. For this reason, investing in a gold standard first draft can save both time and money in the long run, as the inclusion of plentiful and useful fallback options and specific examples within the filed application can support arguments with patent office examiners and help speed up the prosecution process and reduce overall costs.

Once a patent is granted, the protection is defined in the granted claims and therefore defining the claim scope is the key step to obtain a commercially valuable patent. So, whilst the description, drawings and the examples are important when interpreting the claims, the language of the claims is the most important aspect of the patent and must be defined carefully, taking into account the key technical features of the invention, the prior art and the commercially valuable aspects or embodiments of the invention.

5. Choose your countries wisely

Patents are a territorial right and therefore you may require a number of patents in different territories to protect your invention.

Each country has different requirements and different costs and whilst there are agreements in place which can streamline the process, for example the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT), it can be worth discussing with your patent attorney at an early stage which countries are essential for the commercial success of your invention, whether that be for manufacturing a product or to attract licensees or industrial collaborators.

If you would like advice from a patent professional on how to identify and protect your inventions, please get in touch to speak to one of our attorneys.

Wilson Gunn