Four Important Patent Considerations For Inventors

Why Should I Be Concerned With Patents As An Inventor?

If you have just created a new product, or discovered a new process that offers advanced technical solutions to a problem, there would be a strong incentive for you, as an inventor, to patent your invention. Patents grant inventors exclusive rights to their inventions, equating to secure ownership and protection of the inventor’s discoveries. This protection is incredibly beneficial to the invention and concurrently, to the inventor, as patents (1) establish barriers to entry for competing inventions, (2) generate revenue for you and your business through licensing, and (3) prevent third parties from infringing upon your invention.

However, it must be acknowledged that despite the multitudinous advantages listed above, the process of obtaining a patent can be an expensive, time-consuming and confusing one. As an inventor who is looking to patent his or her invention, incomplete knowledge on how to do so appropriately and in the most efficient manner can lead to a rejected or withdrawn application. Therefore, there are a few pointers inventors should keep in mind prior to starting the application process for a patent.

Four Important Considerations For Inventors

1. Your invention must meet requirements to be eligible for patenting.

There are three requirements your invention must satisfy:

a. The invention has to be new

Your invention is not new if it has been disclosed to the public, literally or orally, prior to the date of patent application. Inventors must take into consideration that disclosure of his or her invention to the public in anywhere in the world, will invalidate the newness of his or her invention. Keeping your invention a secret is the best way to ensure its eligibility for a patent until a patent application has been filed.

b. The invention has an inventive step

Your invention will be considered as having an inventive step if the inventive step as mentioned is not obvious to a skilled individual in the technological field of that particular invention. Inventors ought not to confuse ‘obvious’ with the simplicity of the invention: in many cases inventions, such as the AnywayUp Cup, prove to be simple and streamlined, but nonetheless novel and inventive. The best way for inventors to determine the non-obviousness of their inventions is to conduct patent searches. Whilst it is possible to conduct patent searches without professional help, established patent agents are well-versed and knowledgeable in patent searching, resulting in faster and better patent search conclusions. Patent agents are also in a strong position to provide beneficial advice on potential issues that may arise for the inventor.

c. The invention is industrially applicable

Your invention will be considered as industrially applicable if it has practical application and can be made or used in any sort of industry. ‘Industry’ in this context is wide-ranging, and industrial applicability should make itself known from the invention itself and the examples that it provides.

2. Not all ideas are eligible to be patented.

Inventors ought to know not all ideas are eligible to be patented. Particulars such as:

• Discoveries, scientific theories, mathematical discoveries;
• Plant or animal varieties, other than man-made living microorganisms, for the production of plants and animals;
• Performing mental acts relating to schemes or rules for business purposes;
• Diagnostic methods or treatment on the human or animal body via surgery or therapy. (Patents Act 1983, MyIPO)

Inventors need to keep in mind that patents are a form of intellectual property protection. Alternative forms of intellectual property protection are available for non-patentable ideas. For example, creations such as literary works, sound recordings or film are eligible for copyright protection. If you are unsure if your idea is eligible for a patent, an experienced intellectual property agent can assist and advise on the matter and point you in the right direction of the suitable intellectual property protection for your creation.

3. You may or may not be entitled to file a patent.

In most cases, the rights of the patent will belong to the inventor, or if the invention was jointly founded, the rights of the patent will belong to two or more of the inventors jointly. However, if the inventor was under a contract of employment for the execution of the invention, then the rights of the patent shall belong to the employer. In short, your invention or solution belongs to your employer if you are considered to be an employee by the company, organisation or similar. Non-commissioned inventions that came about to be possible via the facilities, means and data of your employer shall also be considered the property of your employer. As each patent application case is unique, a professional patent agent will be able to evaluate each situation properly and determine if the inventor has the rights of the patent while employed to a company.

4. First-to-file means file as soon as possible.

Inventors are strongly advised to file a patent application for their invention as soon as they possibly can. It may be possible for inventors to delay filing a patent application due to being unaware of the first-to-file system or for lacking necessary financial means to do so. Waiting to file an application poses high risk to the inventor as it includes the worst-case scenario of losing the ability to acquire a patent for his or her invention. The first-to-file basis employed by many countries asserts that priority to patent lies with the first person who puts in an application for the same invention first, either regionally, nationally or internationally. Therefore, it is paramount for inventors to file a patent application as soon as possible prior to disclosing his or her invention to the public.

Filing and enforcing patent rights requires a fair amount of effort, cost and time on the part of the inventor. Inventors ought to consider various factors, including local and international competition, market size and trend direction, prior to gaining a patent for his or her invention. However, some downsides of patent application are arbitrary and short-term, such as fees and duration of application, and inventors bound to consider these factors as a necessary investment to secure a patent if his or her innovation has commercial, competitive or life-changing potential.

Quality Oracle has 28 years of professional experience in Patent Registration and Protection in Malaysia and worldwide. We offer a full range of patent filing services, from patent searches to patent licensing and patent renewals. Let us know how we can help you protect your unique invention today.

Resources

• ‘Mandy Haberman: Feeding Innovation for Over 35 Years’ provided by WIPO
• Patents Act 1983, provided by MyIPO