Clients often ask us what the best first step is to take in the protection of their idea. This is not always an easy question to answer and will depend on a wide variety of factors.
There are a few factors that come into play, some of which are directly in opposition to others. This is why your particular path must be chosen with respect to your particular business plan, capacities, and abilities.
Early development v early patent filing
One trade-off relates to the decision on whether to develop your invention as far as you can before filing, versus filing an early patent application for the earliest possible filing date.
On one hand, you have to think about obtaining patent protection for your invention. The two main requirements for patent protection is that your invention must be novel (or new) and inventive at the time of filing your earliest patent application.
Being “new” means that the same invention must not have been put into the public domain anywhere else in the world, by any means before the earliest filing date – in other words, that there must be differences between your invention and what has been put into the public domain (this is called the prior art).
Being “inventive” means that the differences between your invention and what has been put into the public domain must not have been obvious to a person skilled in the art, and preferably must offer significant commercial or technical benefits over what has come before.
If you make a public disclosure or commercial use (even secret commercial use!) of your invention then you will destroy the novelty of your own invention, potentially rendering it unpatentable in many countries. So, in terms of the pure legal ability to get patent protection, it is better to keep your invention confidential until you file your patent application.
However, when you file your earliest patent application, this starts the patent timeline running. All deadlines for filing patent applications into Australia or other countries are calculated from this earliest filing date. Under various multinational treaties that Australia is a signatory to, there will either be a 12-month deadline for filing patent applications into other countries, or a 30/31 month deadline for doing so, depending on which path you take.
The idea is to be able to commercialise your invention as quickly as possible after starting the timeline, in order to be able to generate revenues to help pay for the patenting process. Alternatively, it may be possible to pitch the invention to investors to thereby obtain sufficient funding for the commercialisation and patenting process.
For this reason, it is useful to try and progress your invention (confidentially!) as far along the development track as possible before you file your patent application. However, in order to progress their invention, most inventors need to approach industrial designers, manufacturers, suppliers, and others. It is possible to have such parties sign confidentiality or nondisclosure agreements (NDA’s). These are basically an agreement between the parties that they are going to disclose the secret subject matter to each other for the purposes of assessing whether or not they want to work together. If they do not want to work together, then they will keep each other’s subject matter confidential, subject to the terms of the agreement. If they do want to work together, then they should move on to a proper agreement governing the relationship between them (such as a manufacturing development agreement, a software development agreement, or the like).
There are limitations on NDA’s though, in that, once the invention has been disclosed, a dishonest person may try to find a way around the agreement, and it would be very difficult to prove any flow of information to a third party. An NDA should be thought of more as a way to prove that a disclosure to that party was restricted and therefore not public disclosure.
For this reason, the first prize would be to have a filed patent application before approaching other parties to help you develop your invention.
Prior art searching
Another trade-off relates to searching for prior art. Clearly, there are benefits to having searching carried out in order to establish what is already out there, and what could potentially be patentable in your invention. It is possible to have a pre-filing search carried out before filing a patent application. It is also possible to have a post-filing international search carried out by IP Australia once your provisional patent application has been filed.
There is a trade-off between these two options. On the one hand, it is important to have an early filing date, to prevent somebody else from filing a patent application before you and taking priority over yours, or to prevent the scenario where somebody else comes up with a similar invention and makes a public disclosure, thereby rendering your patent invalid. On the other hand, it makes sense to know what is already out in the public domain before filing a patent application, so that your patent application can be drafted while keeping this prior art in mind. If a search reveals that your invention is in fact not new, then this will have saved you the cost of having the patent application drafted and filed.
As you can see, many trade-offs must be made in your decision on how to proceed. How you choose to proceed will be dependent on the particular circumstances, your budget, and a wide variety of other factors.
If you’re unsure, why not speak to one of our patent experts who will be able to guide you on the first steps?