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the inventor’s knowledge of his or her field of work;
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the internet;
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keyword searches on Patent Office databases;
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paper-based searches at Patent Offices; and
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technical literature.
These different types of searches vary in complexity, reliability and cost. It is the interplay of these factors that determines the selection of the type of search.
The patenting process
Patent rights are ultimately secured by filing a final or complete patent application in every country where patent rights are being sought. It is the steps leading to the filing of this final application where flexibility exists in the process. In general there are three routes that are followed:
· file the final application immediately, without filing earlier patent applications;
· file a provisional application to establish a filing or “priority date” with the final application being filed within twelve months of the provisional application;
· if the patent is to be extended to foreign countries, the PCT or Patent Co-operation Treaty is often used which allows the same application to be filed in more than one country at one time.
Combinations of these processes are also used. The important features of any patent filing program is to secure a priority date by way of the first patent filing (whatever form this takes) and then from this date to ensure that time periods are met and observed in each step in the patenting process.
Patent prosecution
Once a final patent application has been filed at a Patent Office, it is subjected to examination. The level of this examination varies from country to country with some countries only reviewing the documents to ensure that formalities have been complied with (these are so-called “non-examining countries”) while other countries will consider the inherent patentability of the invention relative to earlier inventions and prior art (so-called “examining countries”). The examination and interaction that goes on with the inventor during this phase of the patenting process is referred to as “patent prosecution”.
Based on the outcome of this examination, a decision is made to either grant or reject the patent application. If the application is accepted, the patent is granted and advertised in a patent journal or database.
To patent or not to patent
Once an invention has been developed a decision has to be made whether or not to protect it by way of a patent. There is always an option not to file a patent application and to protect the invention by way of confidentiality. This may be an appropriate strategy to follow in certain circumstances. However, this can only be done where the confidentiality of the invention can be preserved and the invention does not become self-evident from the product or process that is sold or used commercially. Relying on confidentiality is also not an appropriate strategy where the intention is to license or sell the invention. The reason for this is that patents are tradable forms of protection while it is more difficult to license or sell confidential information and know-how.
It must be stressed that even if it is decided to file a patent application it is important to keep the invention confidential, at least until the application has been filed. The reason for this is that any prior disclosure of the invention can be used to invalidate the patent application. All forms of non-confidential disclosure must be avoided, including the sale of products using the invention, the implementation of any process invention on a commercial scale, the publication of articles about the invention or giving presentations to prospective costumers and commercial partners.
Once the patent application has been filed the invention can be disclosed to others without prejudicing the patent.
Provisional or complete?
Once the decision has been made to apply for a patent, a further decision must be made whether to file a provisional patent application or a complete (final) patent application. Many inventors choose to follow the provisional patent route for a variety of reasons:
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there are fewer formalities involved with a provisional patent application and it can generally be filed more quickly than a final patent application;
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a provisional patent application is cheaper than a final patent application. In order to secure patent rights, a final patent application will ultimately have to be filed, but a provisional patent application is a cheaper way of entering the patent process;
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developments and improvements to the invention that are made after the filing of the provisional patent application can still be included in the final patent application. This is more difficult and there are more restrictions if the first application is also the complete or final patent application;
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the provisional application protects the invention for a year before further patenting steps must be taken. This year can be used to do development work, conduct market trials, negotiate with investors to fund the commercialization of the invention and to perform patent searches to establish whether meaningful patent protection will be obtained for the invention.
Can I file my own patent application?
Some inventors file their own provisional patent applications in the belief that this will save them money. This is usually done for less sophisticated inventions and by inventors who are using the patent process for the first time. The success rate of inventions patented in this way is extremely low. A lack of appropriate experience can result in an inventor who files his or her own provisional patent application running the risk of not gaining adequate protection for the invention. The filing of a provisional patent application is not simply a case of compiling a description of the invention. In South Africa, the complete (or final) patent application will have to be filed by a patent attorney.
How do I go about choosing a patent attorney?
When appointing a firm of patent attorneys, review their credentials to ensure that they have a broad spectrum of technical experts. Patent law firms are usually organized into departments offering specialist technical expertise in the chemical, electronic, mechanical and other fields. A patent application is not simply a case of compiling a description of the invention. The preparation of a patent application requires input from a patent attorney who has experience of the field of technology covered by the invention.
What information do I need to give my patent attorney?
Before preparing a patent application the patent attorney will interview the inventor so as to understand the invention and all its features. It is useful to compile a description of the invention before going to the meeting with the patent attorney. This can often be made easier by using a drawing cross-referenced to the description. A well-compiled pack of information will certainly speed up the process and this will ultimately save costs. In compiling the description of the invention it is also useful to include details of other inventions in the relevant field of technology, particularly if the invention has advantages over the existing technology. Highlight these advantages and improvements.
Foreign patent applications
During the patenting process a decision must be made whether or not to secure patents in foreign countries. Bear in mind that a patent that is granted in South Africa will only provide patent protection in this country. There is no such thing as a worldwide patent.
The processes that are usually followed to secure foreign patents rights are:
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filing patent applications in selected countries where the route to commercialization of the invention is clear;
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filing a PCT (Patent Cooperation Treaty) application that is a way of securing provisional protection in a range of countries (more than 120).
PCT patent applications
A PCT patent application does not result in an international patent being granted. It is merely a patent filing system that allows the inventor to delay the filing of national patent applications. National patent applications will ultimately have to be made in each country where patent rights are to be secured. The PCT process delays this decision and gives the inventor time to test the invention, raise capital and decide in which markets the invention is likely to be successful.
The PCT patent application must be filed within 12 months of the provisional patent application, or the first patent application for the invention. The PCT process then allows the inventor to delay the filing of national patent applications by a further 18 months. Other benefits that are offered by the PCT process are:
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the process offers the option of having the patent examination subjected to a comprehensive search and examination process. This provides a good indication of patentability of the invention before substantial costs are incurred by filing national patent applications;
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amendments can be made to the application before the national patent applications are filed. Once again this saves costs during the national patent filing phase.
Conclusion
Patents are a wonderful way of securing and protecting the rights in an invention – and hence its value. The patenting process, however, requires that a number of decisions be made, based on a carefully considered patenting strategy and supported by a sound patent application.