This post is for those that are not familiar with online
patent resources and how they can be used by individual inventors or small
companies. We advise always discussing a new invention with a patent
attorney. However it is also possible to
find a lot of information online which will help in decision-making about
whether to file a patent application.
This post is written from the perspective of a UK-based Patent Attorney
advising UK-based individuals and companies.
1. Online Databases of
Patent Cases
The following 5 sources provide good searchable databases of
existing patent applications and patents:
Many ideas are not patentable simply because they are not
new. Searching patent databases will allow you to see whether your idea is
new. If a published application or
patent describes your idea it will be more difficult for you to obtain patent
protection. You may still be able to obtain patent protection for a narrower,
more specific, form of your idea.
3. How Might the Idea
Be Described in a Patent Specification?
Finding examples of patent specifications in your technical area
will show you how an invention is defined in the ‘claims’ and how it is
generally described in a patent application.
That can help in thinking about the idea in the right way, and may help
you to distil the idea into what new products and activities can be claimed.
4. Existing Patent Specifications
are a Resource for Ideas and How to Apply Them
Well written patent applications can be filled with ideas
for how to use ideas in different ways. By
reading existing patent specifications you may come up with new ways of
thinking about your idea which may help you to think about how broadly you
would want patent protection. It may
also allow you to identify other technologies which could be used with your
idea.
5. Are Companies
Filing Patent Applications in Your Technical Area?
Unfortunately there are certain technical areas where patent
protection can be difficult to get. Many
apps for mobile phones cannot be protected by a patent, though advice from a
patent attorney should be sought on a case-by-case basis because it is a difficult
judgment to make. In addition patent
filings are sometimes not the best way to proceed commercially. It may be
better to rely on the approach of keeping your invention a secret. So, if you are unable to locate patent
filings in your technical area you may wish to think about why that might be
the case. Is it because this type of technology is not patentable or is it
because companies in this area do not consider patents to be commercially
useful?
6. Will it be
Difficult to Get a Patent?
If you find many patent specifications which describe
technologies that are similar to your idea you may find it difficult to
persuade Patent Offices to grant a patent for your idea. Patent are granted for inventions which are
new, but also inventive. That means they
must contribute something that is more than obvious over what is known. However bear in mind that ‘inventiveness’ is difficult
to judge and requires patent attorney advice.
If you do locate existing patent cases that are close to your idea then
it is possible these will also be considered by Patent Offices when they are
examining your patent application. You
may wish to think about how you could argue your idea is inventive over such
cases.
7. Freedom to Operate
Bear in mind that other people’s patents may cover your
products and activities. Therefore if
you are going to be carrying out your idea yourself you’ll need to establish
that you have the freedom to do so. In
the UK you can only be sued based on a granted patent. Therefore if you are searching patent
databases to discover whether you have freedom to operate you need to bear in
mind the difference between patent applications which are not granted and
patents which are. In particular the
claims of patent applications may change (normally becoming narrower) before
grant occurs.
8. Potential
Customers, Collaborators, Investors and Licensees (or Lack of)
Identifying parties who are filing patent applications in
your technical area could be commercially useful in many ways. Such parties could be potential customers,
collaborators or investors. They could also
be interested in buying your patent application or patent, or in taking a
licence. Conversely if you do not find
parties filing in your technical areas then this indicate a lack of commercial
interest, and you may find it difficult to sell or licence your patent case.
9. Likelihood of
Attack on Your Patent Cases
Monitoring the behaviour of parties in your technical area
may also give you an indication of how likely it is that your patent cases
could be attacked by competitors. Patent
cases can be attacked before and after grant, for example using third party observations
and opposition procedures. Patent
databases can be used to see how often patent cases in your area are attacked
and may allow you to identify companies with aggressive patent policies.
10. Competitor Activity
Parties filing patent applications in your area could be potential
competitors. Their patent filings may
give you an idea of their areas of interest, the directions they are taking and
how fast they are progressing. Knowing
about their patent cases will also allow you to consider whether you wish to
attack them, particularly if they are relevant to your freedom to operate.
You may also wish to see related articles Advice
to People with Ideas and Advice
to Scientists Setting Up a Company.
No comments:
Post a Comment