What to do before filing?

Have you decided to utilize for a patent? In this instance, you might be wondering what the steps before filing your patent application are. Nosotros prepared a guide for you, divided into two parts: what you should practise and should not exercise at this bespeak.

The second part of the guide can exist found here: "5 things you should avoid before filing your patent application". Feel free to contact us if yous accept any questions while reading this guide.

xi deportment to take earlier filing:

  1. Keep your invention secret until the date of filing

    If yous ever plan to utilise for a patent, information technology is very important that you do non publish your idea before filing the patent application. A publication earlier the date of filing should not happen either on purpose or by accident. Since novelty is one of the requirements of patentability, you will not exist able to patent your invention if it is already published, i.e. non new anymore. You tin preclude unwanted publication past request people to sign an NDA (Not-Disclosure Agreement), see the side by side point.

  2. Earlier discussing your invention with anyone, accept them sign an NDA (Not-Disclosure Understanding)

    Y'all tin download a template (prepared past the WIPO) by clicking here: Download document

    However, even if yous are protected past an NDA, be careful what you reveal to others and mainly what you tell experts in the field of your invention. We recommend minimizing your meetings earlier talking to a patent attorney and before the appointment of filing.

    Yous practice not demand to inquire a patent attorney to sign an NDA, see the next bespeak.

  3. Talk to a patent attorney

    The starting time footstep should exist talking to a patent attorney in order to plan your overall intellectual property (IP) strategy. Yous should exist safe disclosing details of your idea to people whose professions require them to observe confidence in all dealings with clients.* (This includes patent attorneys, other legal professionals, EPO and national IP office personnel.) When dealing with anyone else - companies in detail - y'all should not disclose anything without at least a signed non-disclosure agreement (NDA).

  4. Study the patent application process

    Applying for a patent is a legal process having several strict timescales and usually non extendable deadlines. It is definitely non something to rush into. Take time to study the procedure and inquire a patent chaser all of your questions earlier the filing of your patent application. Make sure to get your information from reliable sources, like a patent attorney or the EPO (www.epo.org).

  5. Study the competitors' products and patents

    Y'all probably know who your biggest competitors are. Take time to study their products and search for their patents. Call up near what your competitor does well, and think near how your product could work better. Sympathize the differences betwixt the products and attempt to recall nigh how yous could amend your invention or new features yous could add. Knowing the prior fine art and the like solutions in the market tin can also help you evidence during examination that your invention is new and inventive.

  6. Study the costs

    When yous ask your chaser what fees you should look when filing a patent awarding, you lot will probably receive a cost estimate including a service fee for drafting, filing and official fees for filing and search. However, later on in the procedure there are other fees, like exam and designation fee after publication, annuity fees for each year from the 3rd twelvemonth (the annuity for the 3rd year must be paid on the second anniversary of filing), preparing responses to part actions, grant fee, validation fee, etc. Each step (filing, patent prosecution, grant and validation) costs thousands of euros, not mentioning the costs of enforcing your patent rights. Surprisingly, translation fees are too a notable part of the costs.

    Do not file a patent awarding if yous cannot afford professional representation or if you exercise non have the budget for paying the maintenance fees subsequently 5 years.

    Y'all can discover the current fees of the European Patent Part here.

    We have a full article on the costs of patenting here: "Costs of patenting".

  7. Think nigh whether y'all really need a patent

    Is a patent your best alternative, or would y'all be amend off with a trademark and spending more money on marketing? Does your invention has very curt life cycle? Would information technology be easier to keep it a secret? Tin yous build a profitable business around your invention? Information technology is very of import to call up most whether you lot actually need a patent in order to avoid spending too much time and money on something yous do not really demand.

    Meet the commodity including more idea-provoking questions here: "Do yous really need a patent?".

  8. Know what yous want to attain with a patent

    If yous know the reason why yous demand a patent, information technology is so much easier to create your IP strategy and adopt during the patenting procedure. For example, should you need the patent only for the awaiting status, you might be interested in slowing downwards the patenting process. This way, you can as well spread out the costs, which has its obvious advantages.

    We collected the virtually common misconceptions well-nigh patents so that you do non take unrealistic expectations from a patent: "The most common misconceptions about patents".

  9. Guild a professional prior art search

    A prior fine art search volition help you assess the state-of-the-art in a specific technological field and evaluate the patentability of your invention, in particular novelty and inventiveness. Patent documents are easily accessible through online patent databases, like Espacenet, a high-quality simply free patent database maintained by the EPO. (Espacenet contains 120 million patent documents from all around the world.)

    During the search, nosotros utilize keywords describing your invention. This mode, we will take a list of similar inventions that we can study in more detail. As a result, you volition get a patentability opinion, and also the thought of the latest developments in the relevant technical field. In the patent database we tin can also search for your competitor's patents in social club to monitor their activities and avoid infringing their rights.

    If you take time and understand patent language, you might be able to do the search yourself, using the EPO'south Espacenet database for example.

    Exercise not hesitate to contact u.s. if y'all would like to order a patent search.

    TIP: If the patent search reveals an identical invention which questions the novelty of your proposed invention, dig deeper. Study the patent documents and figure out what you could amend in order to get both a meliorate and a patentable product.

  10. Prepare a thorough clarification of your invention (invention disclosure report)

    It is not allowed to add new information to your patent application after the filing date.**

    Thus, information technology is very of import to write a detailed clarification before filing the awarding and to include all possible embodiments. Yous volition not be able to add together new features and examples later (for instance when trying to overcome novelty objections). When describing your invention, think about how y'all would circumvent your own patent, and mention all the alternatives you lot could come up with in the application.

    We take a full article on how to set up the invention disclosure course here: What is an information disclosure document?

  11. Plan your overall intellectual holding (IP) strategy

    There is no strategy that fits everyone. The best strategy is the i that suits your purposes and aligns with your company's general strategy. If you plan your strategy thoroughly, you can start the whole patenting process prepared. We propose discussing your plan with your patent attorney, and do not forget to recollect nigh other forms of IP, such as trademarks and designs. Your IP strategy will profoundly depend on your goals, your upkeep, the size of your company, your business plan, and and so on. With a profound IP strategy, y'all volition have time to prepare the best patent application, will be able save money, plan the timing of your filing and your business concern negotiations, and cull the countries where you need a patent, etc.

"The value of any loftier growth company is derived mainly from the intellectual property avails that it owns. IP strategy is about implementing processes that will assistance an organization to exploit and use its intellectual property assets to create value for the organization."
— Nikos Minas IP strategist and European patent attorney

* Regulation on discipline for professional person representatives (OJ EPO 1978, 91, OJ EPO 2008, fourteen)
Commodity 2 - Professional person secrecy:
"A professional representative shall be bound not to disclose data accepted by him in confidence in the practise of his duties, unless he is released from this obligation."
See the full legal text here.

** This is defined in Art.123(ii) EPC:
"The European patent awarding or European patent may not be amended in such a style that it contains subject field-affair which extends beyond the content of the application as filed."
See the full legal text here.

Author: Zsofia Pintz
Published: August, 2020

Exercise you have any questions?

Experience free to contact u.s.a. if y'all accept any questions, suggestions or if you lot would like to order an online consultation.

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