Intellectual Property is typically the most resourceful subject for an organization. One can easily understand trademark & copyright but mostly mistakes are done in case of patents only. In fact, committing mistakes in drafting patents application results in heavy loss of amount to industries. So one should always avoid doing the most common mistakes while drafting patent applications.
We often hear this word as patent drafting, so what is it?
Writing of claims and descriptions for any patent application, to describe the inventions clearly is called patent drafting. A method of expressing an inventor’s idea into a tangible document which is expressed in the best possible way to get patent on it. The inventions should be clearly and exactly described so that it is being distinctly identified and the inventor gets the patent on his work. But unfortunately, inventor still encounters some common mistakes while drafting.
Mistake 1: No prior Art searches
A prior art search is intended to let you know the probability of acquiring a patent on your idea. When a patent application is submitted to the patent office by the inventor, a patent search is conducted by the examiner to find the possibility of patenting your invention.
Now, this could be avoided if the inventor conducts a prior art search by accessing free patent databases sites or consulting a patent agent to find the patent art reference which is similar to his/her invention. Based on prior art searches, it helps in deciding and further modifying it his invention so as to get patent and distinctly defined.
Mistake 2: Wrong Time! For filing the patent application.
It is crucial to know when to file a patent application so that companies can take utilize the IP assets properly. However, it is observed that either the patent application is filed early or too late. Also, people have a tendency to first see whether the product or its services would be viable in the market. If they see some benefits coming out of that product, they think of pursuing it for applying.
To avoid this, if the applicant or the inventor has made any disclosure before the filing date of patent application, that will be turned as prior art and will also lose some patents rights of foreign countries. So, the inventor should file a patent application first, later putting it into public domain. This gives the benefit that your invention has at least been filed. Now the inventor can analyze the market value and demand of the product and further to go for patenting that application in other countries. Now for filing in other countries, PCT application has to be filed within 12 months from the first patent filing date.
The best time to file a patent application is usually after the invention has been approved for commercial production and prior to any public disclosure of the invention.
Mistake 3: Poorly drafted Application
This is the most common mistake. So one should not do hurry in drafting a patent application. This happens because of lack of knowledge of drafting and patent laws.
The rush to file a patent application with no knowledge of the patent system, often makes the inventor land up with a poorly drafted application which does not meet the requirements of law.
To avoid all this, each and every feature, functions or design of the invention should be elaborated in detail in order to understand the technical part of the invention, if any. It would be better if the inventor may make use of drawings to explain the working of an invention. Also, the claims should define clearly the limits and boundary of the invention in a patent application. The patent application should be presented in such a way that a person skilled in the art will be able to implement the invention by going through the description provided, with reasonable experimentation.
Mistake 4: Not Taking Advantage of “Provisional” Applications
It happens that the inventor, at times, has only the idea, but don’t know how to implement it. Or there are chances that the invention is at its early stage and not yet in finished form. In these two cases, the inventor most of the time waits for the invention to get it complete so as to proceed further with filing patent.
The best solution could be provided is that the inventor need not wait for the invention to get it complete. The inventor may proceed with filing “provisional application”.
A provisional patent application is a preliminary step, before filing of a regular patent for acquiring a kind of between time assurance. One can file an application for a provisional patent without any formal patent claims.
Only the basic details of the invention may be open up in the provisional one and no requirement of submitting claims. A provisional patent application can quickly help you to protect your invention and block your date !!
Provisional applications are considered “provisional” because they are temporary. The Provisional specification describes the nature of the invention to have the priority date of filing of the application in which the inventive idea has been disclosed.
An applicant who files a provisional patent application must file a corresponding non-provisional application (complete specification) within 1 year (12 months) of the provisional application filing date in order to benefit from the earlier filing of the provisional application. If the complete specification is not filed within a year, the provisional patent application is considered abandoned.
Mistake 5: No Usage of Non-Disclosure Agreements:
It would be very disappointing to disclose the confidential documents because it will make one to suffer a heavy loss of work. No one wants to disclose his hard work and may allow the other person to use it. It’s better to prevent your work with an enforceable Non disclosure agreement (NDA).
“A non-disclosure agreement (NDA), also known as a confidentiality agreement (CA), confidential disclosure agreement (CDA), proprietary information agreement (PIA) or secrecy agreement (SA), is a legal contract between at least two parties that outlines confidential material, knowledge, or information that the parties wish to share with one another for certain purposes, but wish to restrict access to or by third parties. It is a contract through which the parties agree not to disclose information covered by the agreement.1”
So, when an inventor discloses any of his/her inventions to the third party, it is advisable to the inventor to first get a sign on NDA by the third party so as to assure that his/her work will not be reveal out . If any violation occurs like, the third party, being under an NDA, reveals the inventor’ s work in public domain, before any filing of an application, the information revealed would be count as prior art. However, some patent laws exist today which gives allows the inventor to file an application after such violation, for a certain duration of time. If the application is filed within the given time duration, the disclosed information would not be considered as Prior art.
To conclude, it is advisable that should have a proper knowledge of Patent Laws and patent system while filing a patent application so as to avoid the above mentioned mistakes which might bring heavy loss to an inventor or an organization. It would be good to engage a patent attorney to understand clearly the concept and procedure of patent application.