Not only does Baxter IP meet inventors every day but Warren Chandler of Baxter IP also provides discussion of patent, design and trade mark matters to the Inventors Association of Australia (Victoria division) in some of their monthly association meetings. One such meeting occurred this month.
At the recent meeting of the IAA, Warren was able to provide advice on a number of issues including:
Prototype or patent application?
It is not necessary to develop a prototype but you can file an application claiming the invention. It should be remembered though that we cannot just claim the concept but must know generally how the invention will be put into practice. That does not mean you need to be a plastics manufacture, or electronic engineer, or chemist but that generally you know how to apply the invention.
The great benefit of a patent application is that you are defining your invention and being given an official patent application number and an official filing date. You have, through your patent application, defined a new asset, which you can try to exploit. Although you do not yet have a granted patent with patent rights – you are “first in line” and no-one can jump in front of you.
Application or disclosure under confidentiality agreements?
It is usually possible to disclose your idea to a prospective manufacturer or marketer under the protection of a confidentiality agreement. There are some limitations to this approach.
Some companies you might wish to approach are so large or have extensive research facilities that they do not want to sign confidentiality agreements. They could consider that a similar idea might come from other sources than from you and so believe you should rely on your patent application and the “first in line” date that this document provides.
Another concern is that to rely on confidentiality agreements it is necessary to define what subject matter is being maintained confidential. This can sometimes requires an extensive disclosure of the invention. therefore it is beneficial instead to fully describe the invention in a patent application. As ;patent applications are not published for 18 months you can still approach with confidentiality agreements and referring to the invention as described in your patent application.
Patent application or “grace period”?
In the new law of “grace periods” sometimes inventors wish to rely on such provisions. we believe they should be considered as emergency provisions.
“Grace periods” are where your own earlier disclosure of the invention over the previous 12 months, will not invalidate your patent application. There are some limitations to this saving provision. first you must proceed to a complete application and not the usual provisional patent application. Second it is only your disclosure and not third party disclosure of your idea or similar ideas.
The safest approach usually is to claim your invention at a particular date by filing a patent application first. However we can always review exceptions and available emergency actions when required.