Navigating through the patent process can, at times, seem to be an arduous task. Your patent attorney, as your trusted adviser, is often crucial to
- understanding the varied aspects that you need to consider at each stage, and
- mitigating any possible pitfalls that may befall your patent application.
While you can expect your patent attorney to provide you with timely advice on how to go about each stage of the patent process, there are many things that you can do to make the process much smoother both for your attorney and, most importantly, for yourself.
1. Speak to your attorney early
Patent applications can be time consuming to prepare, so it’s important to give your patent attorney as much time as possible to prepare a quality document that will support your commercialisation goals well into the future. In legitimately urgent circumstances it is possible to draft and file a patent application in a matter of a few days, but the document will be of inferior quality compared to that you can expect if your attorney has three or four weeks to prepare it.
Of course, if you are about to make an imminent disclosure on a commercially sensitive project then you should contact your attorney immediately, and determine what scope of protection you can obtain within the limited time available. If you find yourself in this situation you should also consider taking the time to prepare and file a second provisional application as soon as possible after you have made the disclosure.
When you take the project to the next stage of the patent process, you can combine the two provisional applications into a single complete specification, which should be filed within 12 months of the filing date of the first, quick application. This way your complete application will have the benefit of a priority date before you made the disclosure, but also the completeness of the second provisional application. There are still some traps to be wary of, but if you speak to your attorney early enough these can usually be minimised.
Please don’t underestimate the importance of this particular point. Actually, many of the following points are a variation on this theme: if anything of relevance comes up in relation to your patent application or patent, you should speak to your patent attorney as soon as possible, so that you can take appropriate action, if required, before the opportunity expires. Patents and patent applications are extremely time-sensitive. Taking early action can quite often mean the difference between having granted patent protection for your invention, and losing your rights altogether.
2. Don’t hold anything back from your attorney
When you speak with your attorney regarding the preparation of a new patent application, make sure you give them the complete picture surrounding your project. For example, make sure you tell them:
- Details of existing solutions, if any, to the problem that your invention is intended to solve.
- Any special or unexpected advantages that your invention has over the existing solutions.
- Whether you have made any aspect of the invention publicly available – this includes any publications disclosing the invention made, and any discussions you have had about the invention that are not covered by some form of confidentiality agreement.
- Whether you have been previously using your invention, or have offered it for sale to any third parties.
- What your commercial goals are.
Your patent attorney needs this information in order to provide you with actionable advice on whether or not you can protect your invention using the patent system. In many cases, it may reveal that your invention is no longer patentable (e.g. if you have made it publicly available or made any offers of sale or actual sales of the invention). If your attorney does not have this information at hand, you could end up spending vast amounts of money on a patent application for an invention that, ultimately, may not actually be patentable.
Often clients or potential clients withhold information from their patent attorney, especially in the early stages of preparing to file a provisional application on a new invention. This is usually because they are afraid to ‘give too much away’ in case the attorney takes their idea and uses it themself. Quite regularly patent attorneys meet clients who have been told not to tell anyone about their invention, because doing so would invalidate it. Unfortunately they then extend this advice to the patent attorney who is engaged to help them get the strongest possible patent protection for the invention.
You should not be concerned about speaking with a patent attorney about your invention. Patent attorneys in Australia are bound by Section 200 of the Patents Act 1990, which sets out that:
… communication made for the dominant purpose of a registered patent attorney providing intellectual property advice to a client is privileged in the same way, and to the same extent, as a communication made for the dominant purpose of a legal practitioner providing legal advice to a client.
What this means is that all correspondence (or discussions) with your patent attorney for the purpose of patent advice is privileged information, which your attorney is legally bound to keep confidential.
The registration of Australian patent attorneys is coordinated by the Federal government, and attorneys must abide by the Code of Conduct for Patent and Trade Mark Attorneys (you can download a copy here). This Code is a Federal Statutory instrument and Section 19 of the Code stipulates that a registered attorney must not “ … take advantage of information given by a client, or a prospective client, for the registered attorney’s own benefit or on behalf of another person.” Basically, if a patent attorney wishes to maintain their professional registration, they simply must keep any information from a client or prospective client confidential.
All this means that you should feel safe in telling your patent attorney any information relevant to your existing or new inventions or ideas.
3. Let your attorney know if you are aware of any relevant prior art (See point 1)
If prior art exists that discloses particular features of your invention, it does not necessarily mean you won’t be able to obtain a patent. In many cases your attorney will be able to work through the prior art and find a scope of protection for your invention that does not encroach on the disclosure in the prior art. This is the typical process that occurs during the examination phase of your patent application. However, if you are aware of relevant information that may impact the patentability of your invention, it is vital that you inform your attorney from the outset. In some countries, most notably the United States, the simple act of not disclosing relevant art that you are aware of can mark the death knell for your application, or even the granted patent itself. In the USA, withholding that sort of information is considered an act of fraud on the patent office, and can provide a competitor with grounds to have your patent revoked, if they discover that you were aware of relevant prior art and actively chose not to disclose it to the patent Examiner.
You will continue to have this duty to disclose any prior art that you become aware of right up until your patent is actually granted. So it is very important that you to inform your patent attorney if you come across any new relevant information at any time before your patent is granted. If you are in any doubt as to whether any particular piece of prior art is relevant, it is prudent to disclose it and let your patent attorney or the patent Examiner at the patent office decide. There are no penalties for disclosing information that ultimately is not considered relevant, but there can be severe consequences for failing to disclose even a single piece of prior art that is or would have been relevant.
4. Document everything about your invention as completely and concisely as possible.
Make sure you tell your attorney as soon as possible if there are any changes at all which may affect your patent rights, for example:
- If you come to an agreement with a third party for them to license your invention.Depending on the terms of the licence, it can be prudent to have the licence recorded at the relevant Patent Office, otherwise the licensee may only be granted limited rights to enforce the intellectual property.
- If you decide to sell your company to another party.
If a change in ownership is not recorded at the relevant Patent Office, the new owner may only have limited rights to enforce the intellectual property.
- If you change your corporate strategy, e.g. if you intend to begin marketing your invention to a new demographic or into a new country.
Your attorney can evaluate your Intellectual Property portfolio to ensure you have adequate protection for the new demographic or country, look for any potential conflicts, and modify your strategy accordingly.
- If an inventor named on a patent application decides to leave your organisation.
It is important to make sure that you complete any documentation relating to the patent application before the employee leaves – it can be difficult at best to try to track down signatures from a former employee after they have left.
- If you decide to allow a patent application or patent to lapse.
If you decide not to proceed with a patent or patent application, let your attorney know so they can remove the case from the reminder system, to avoid unwanted correspondence and unnecessary costs.
5. Let your attorney know if anything changes at any time
Let your attorney know if there are any changes at all which may affect your patent rights, for example:
- If you come to an agreement with a third party for them to license for your invention.
Depending on the terms of the licence, it is occasionally prudent to have the licence recorded at the relevant Patent Office, otherwise any rights that the licensee is granted to permit them to enforce the intellectual property may be limited.
- If you decide to sell the ownership of your company to another party.
If a change in ownership is not recorded at the relevant Patent Office, the rights of the new owner to enforce the intellectual property may be limited
- If you change your corporate strategy e.g. if you intend to begin marketing your invention to a new demographic or into a new country.
Your attorney can evaluate your Intellectual Property portfolio to ensure you have adequate protection for that demographic or country and whether any potential conflicts can be foreseen before they arise and modify the portfolio strategy accordingly
- If an inventor named on a patent application decides to leave your organisation.
It is prudent to ensure that any documentation relating to the patent application is executed before the employee leaves – it can be difficult at best to try to track down signatures from a former employee after they have left.
- If you decide to allow a patent application or patent to lapse.
If your attorney knows that you are no longer proceeding with a patent or patent application, letting them know of this decision early will allow your attorney to take the case out of the reminder system and will eliminate unwanted correspondence and possible costs to you regarding an abandoned case.
6. Let your attorney know of any improvements early
If you make improvements to your invention in the early stages of the patent application process, (i.e. during the 12 months after you lodge a provisional application), your attorney can incorporate these improvements into the patent specification, giving them the same priority date as the provisional application.
For this to be possible you will need to provide details of the improvements to your patent attorney early enough so that they will have time to amend the patent specification before lodging a complete patent application (either an international PCT application or one or more direct national patent application filings).
In addition, if you let them know about the improvements immediately your attorney will be able to evaluate them and possibly suggest other avenues for investigation, or further improvements which could also be captured in the specification of the complete patent application(s).
7. Ensure your ownership structure is established early and patent rights are properly assigned to the owner of the Intellectual Property
Ownership rights to a patent are quite strict. Only a person or entity that is entitled to ownership of the invention can be granted patent rights over it. In some countries it goes even further, to the point where a person or an entity can only file for a patent application if they have entitlement or actual ownership of the invention.
In most cases, the original inventors are the owners of an invention, and they have the right to file or to be granted a patent for it. In many countries, if an inventor is employed by a company to undertake work that could lead them to an invention, then the employer can be the owner of the invention by virtue of appropriate clauses in the employment contract.
In any case, before you file a patent application it is important to ensure that the ownership of the invention is settled between everyone who has made a contribution to it. This is particularly important in the case of joint venture operations between entities. The most robust means of achieving this is to have each of the inventors sign an assignment document to the party who is to be named as the Applicant of the patent application. This should ideally be done for every patent application, to remove all sources of doubt as to whether a particular invention is to be owned by the inventor’s employer, by themselves personally, or another party e.g. by prior agreement.
8. Ask your attorney if there are any discounts for early payment
As you can see, patents and patent applications are extremely time sensitive. It is really important to avoid giving your patent attorney instructions for anything substantive close to a critical deadline. In the best case scenario they may be able to complete the work, but most likely to a lower standard than they could achieve with more time. In the worst case, you could miss the deadline and irrevocably lose your patent protection.
In many cases, a surcharge may be added to the cost of the work that has to be conducted at the last minute before a deadline, since the attorney will have to drop other cases, each with their own critical deadlines, to work on your particular case. You will find that many attorneys actually offer discounts for early payment of the expected charges, as it enables them to manage their time effectively and provide you with the best possible service.
And let’s face it, no one enjoys having to drop everything and work late into the night or over the weekend to meet a deadline! Your attorney is more likely to go the extra mile for you and pass on any available discounts if you give them instructions with time to spare, and pay your invoices promptly…
In summary, the most important thing you can do to assist your patent attorney is to speak with them early and often. After all, your attorney is your legal advocate, charged with ensuring strong protection for your inventions and, either directly or indirectly, your commercial success. It makes sense to give them all the information they need so that they can give you the best possible service.
Your patent attorney can often provide you with valuable advice either to secure your commercial success and to safeguard your business from potential attacks. Keeping them abreast of your commercial activities and goals means they’ll be able to provide you with timely, relevant advice – but only if they are kept in the loop.