December 8, 2015

Tips and Traps for Inventors

Being Patent Attorneys we have been privileged to work with some of Australia’s best inventors ranging from sole inventors and those working in start ups, to those working for large multinational companies.

These inventors have given us insight into a series of helpful tips and traps for new, and sometimes seasoned, inventors, in particular, when they are seeking to protect their inventions via patent rights. Accordingly, we have put together our 3 top tips and traps for inventors when seeking patent protection.

 Tips for Inventors

  1. Keep it Quiet – As a general rule you need to file a patent application before disclosing your invention (such as by offering your invention for sale or showing your invention on a website). It is recommend that you work out your IP protection strategy upfront and before any disclosure.
  1. Look before you Leap – You can’t obtain valid patent rights unless your invention is new i.e. it has not been done before anywhere in the world. It is suggested that at least basic background and patent searching is conducted to determine if your invention is new, and likely to be patentable.
  1. Consider the Commercials – No matter which way you slice it, the cost to properly patent an invention will set you back at least a few thousand dollars and in some cases in the tens of thousands if you seek patent protection in a few countries overseas. Accordingly, you should conduct some initial investigations into how much your invention will cost to develop and make, and estimate the kind of commercial return you may expect in the first, say, 5 to 10 years. Will this estimated commercial return exceed the costs to patent protect your invention?

 Traps for Inventors

  1. D.I.Y Patents – According to IP Australia about 98% of self-represented inventors fail to achieve a granted Standard Patent. Many inventors who attempt to draft and file their own patents either lose their rights or unnecessarily limit their rights. It is recommended that you seek advice early to avoid jeopardising your patent rights.
  1. Not understanding the Value of Patents – Some inventors become caught up in the mantra “we’re not going to enforce our patent rights so why bother…”. However, the real value of patents lies in the patent “deterring” others from copying your invention to avoid potentially breaching your patent rights. This “deterrent” ultimately provides commercial leverage such as investor appeal, market share, product price point and company value. In fact, for the vast majority of inventors your patent will work behind the scenes to keep your competitors at bay without you ever needing to consider enforcing your patent rights.
  1. Waiting until the Patent Grants – Patents can take years to grant, so don’t get caught in the waiting game. It is suggested that you pursue an aggressive commercial strategy as soon as your patent application is filed and work toward commercial goals such as a licensing deal or the launching of a new business.
Patenting Basics
  1. I have a provisional patent application that expires in June 2018 for a water turbine. The Australian Maritime College have given an estimate of $60k for testing. I feel confident that the the invention is novel, but made the PPA without a patent attorney. I think it is well drafted. There is little point getting patents if there are better existing turbines.

    If I post a blog on the internet to raise money from investors for testing, what are the main problems? I am retired, so have to rely on investors.

    • Hi Ian,

      Thank you for your comment. We can’t provide specific advice here. But, in our experience 95% + of self-drafted provisional patents will miss something or not use suitable language on which claims of a complete patent case can be based. The risk therefore is then that the complete patent when filed may not be able to validly claim back to the provisional patent filing date. Accordingly, if your provisional patent filing date does not hold – then publishing of the invention on a blog may then form prior art to your complete patent and hence invalidate your complete patent.

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