Patent Pitfalls |
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| Is your idea patentable? |
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Various things are not patentable, e.g. computer programs or ways of doing
business. The IPO has a
list of excluded material. However, it isn’t completely straightforward
because the interpretation of the list depends on a number of cases in the Law
Courts, and if you think your idea falls into one of these area (unless you are
a lawyer) it is best to get in touch with me at the very start of your venture.
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| Searching: Is your idea novel and
inventive? |
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If somebody else has not already done it or described it, then your idea is
novel. If others have done or described something similar, your idea may be
obvious from what has already been done or described, and therefore would lack
an inventive step. The novelty of your idea, and whether or not it has an
inventive step are determined by a search of what has been published before. |
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You can do this search yourself, using Google, Google Scholar and Free Patents
Online, for example. If your idea is not novel then you will probably find
articles or patents that describe your idea exactly. More likely, you will find
articles that are similar to your idea. The question then is whether the
differences between these articles, and what was generally known at the time
they were written, make your idea obvious. Thus the presence of an inventive
step is harder to determine. The pitfall of doing the search yourself is that
there is a chance that you might miss articles concerning the novelty of your
invention, and a bigger chance that you will miss articles that cast doubt on
its inventive step. This means that all subsequent stages in the patenting
process are at risk. |
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In addition to or instead of doing the search yourself, you can pay the
Application Fee (�30) and the Search Fee (�100) and ask the IPO to do a search.
But before you can do this you need to have drafted your patent application,
including an abstract and at least one claim; drafting is not without its own
pitfalls… (see below). When the IPO do the search, they
search worldwide documentation to help decide whether patent applications
have novelty and an inventive step. However, if the patent application you have
drafted doesn’t properly capture your idea, and the claims do not adequately
delineate the scope of your idea, then the search results may not be very
accurate. The IPO aims to complete the search within four months of request and
to send you the results of your search together with copies of the documents.
They will also inform you if any part of your application is not formally in
order. Armed with the results of the search, you can decide whether to carry on
with patenting your idea or not. You can also think about whether you should add
or amend your patent application to work around the documents that have been
identified in the search. At this stage, you may well have thought of
embellishments or improvements to your idea anyway. These can all be included in
a revised document and you can file another application, claiming priority from
the first one.
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| Drafting: have you adequately
captured your idea? |
A good patent draft has:
- Context
The description should set out your invention against what has already been done
- Clarity
The description of your idea must
be clear and avoid “relative terms which have no generally accepted meaning” and
“imprecisely defined parameters”
- Enablement
The description should be detailed
enough so that a competent technician could do or make your idea work, and
critical information should not be omitted
- Utility
Your idea has to work!
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For a good draft then, at least a rudimentary search of some kind should have
been done, and against this background, what you are trying to do is put into
words the features of your invention, describing it fully and in such a way that
there is enough information for others to carry it out. The description should
show in detail with reference to the drawings one or more particular examples of
your invention. Whilst not crucial when you are filing a provisional
application, it is a good idea to include as much detail as possible in the
filing because the priority date you get covers what is set out in what you
file. So, although you can add more information in further filings made in the
year following the first application, these new elements will have a priority
date relating to when the further filings were made. For this reason it is best
to explain the full scope of your invention in your first filing. |
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Of course, if you are planning to press ahead and try and obtain a patent
quickly based on what you file (see below), you will not be allowed to add
information later.
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| Drafting: do the claims
adequately define and delineate the scope of your idea? |
Good claims rely on bringing together three disparate aspects of English
language:
- plain language
- technical language, and
- the law.
Claims are a
precise statement of your invention, and what is written here defines what
protection you will get if your patent is granted. You can’t put anything in
your claims which you have not already referred to in your description, and
whatever goes in the claims has to be fully supported by the description. The
first claim must define the invention by setting out its distinctive technical
features, i.e. features which distinguish your invention from what is already
known within the same or similar field. To write good claims then, you need to
have a rudimentary knowledge of what has gone on before.
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| How to avoid the pitfalls? |
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