Dropbox, Airbnb, Twitter – all these succesful companies have one thing in common: they became successful using the lean startup model. This method questions traditional business concepts and procedures, and instead promises greater flexibility and innovation. But what do lean startups mean for product development and company culture, and how can you benefit from these new ideas?
A patent is a protective right that protects your intellectual property. Unlike copyright, it does not protect artistic works, rather it protects inventions and ideas. When you apply for a patent, you prevent third parties from using your idea and from reproducing or exploiting your invention. You can grant licenses for a fee, meaning others can adapt your idea, but you still get paid for it.
Unfortunately, filing a patent application is often a lengthy process and a major financial challenge for many SMEs. Furthermore, patents are only valid in the country in which they are filed. However, the Patent Cooperation Treaty (PCT), originally started in 1970 and modified in 2001, aimed to simplify the process of filing patents in several countries. This guide will take you through the essential steps and warn you of the hurdles of a patent application.
- Requirements for filing a patent application
- US and international patent applications - all in one place
- Applying for a patent: the costs
- How to patent an idea: the checklist for how to file a patent
Requirements for filing a patent application
If you are seeking to make a patent application, your invention must meet certain requirements. First of all, it needs to be a technical invention – not just something you have discovered. The US Patent and Trademark Office (USPTO) requires matters which apply for patenting to be “new and useful”, and to fit into the category of a process, machine, manufacture or composition of matter. Here are some more of the patenting regulations, as set out by the USPTO:
- Above, a requirement was for a new patent to be applied to something that was useful However, it is important to note that requirement only applies to utility patents.
- The abovementioned requirement that the invention must be "novel," or new, however, applies to all.
- Another criterion is the somewhat cryptic requirement for the invention not to be “obvious”. This means that its function can't expand on something which has already been patented. This is one of the trickiest criteria to justify, both for you and the USPTO.
- Your invention cannot be public knowledge. This is all about company secrets to the max. It also makes advertising and market research harder, because if, say, you write an article about it for a relevant magazine, you may have issues with the USPTO because the concept exists in the public realm of knowledge. This is called disclosing the patent, so your proposal cannot be “disclosed”.
In our article “The Patent: Protect Your Valuable Ideas“ you can learn more about the intellectual property rights of a patent, strategic patent management and how you can encourage innovation in your company.
US and international patent applications - all in one place
Case study: Edith Weyde and Andre Rott, of Germany and Great Britain respectively, both developed and patented a modern process to produce photocopies using silver salt diffusion for the first time in 1941. Was this legally acceptable? As mentioned at the beginning, a patent is only valid in the area where you apply for it. This practice is based on the principle of territoriality. If your invention is patented in the USA, someone with a similar innovation in Iceland, for example, could still make money with it. This is not unusual, because companies are constantly researching in the technical field and investing large sums in development. Technology and the research surrounding it changes daily - and so similar ideas can emerge independently of each other at the same time.
Instead of investing in their own research, some companies copy existing inventions that aren’t patented in the company’s country. Sometimes these companies even patent this product and exclude the actual inventors from that national market. If the necessary financial resources are available, it can therefore be worthwhile applying for cross-border patents in order to prevent product piracy.
Individual Patent Applications
If you would like to register your patent in different countries separately, be sure to inform yourself about the registration requirements of the respective countries. As a rule, you will always need a translation of all your documents into the official language of the respective country, although this may not be the case for English. Each time it will cost you for the application, evaluation and admission of the patent, and the fees vary in each country. The annual fees must be paid in the local currency. Otherwise, there is a risk that the patent will expire.
Global Patent Prosecution Highway
The Global Patent Prosecution Highway (GPPH) is a multilateral project designed to improve the exchange of information between patent offices. If you apply for a patent in one country, you can expect the same requirements from the others, if they are part of GPPH. If the invention has already been examined in one of the countries involved and the patent has been permitted, you can file your patent application in any member state using the available information of the first application. Whether or not this patent is then granted in the member country is another matter, but at least some administrative effort can be saved!
The project aims to make it easier for inventors to protect their intellectual property and to promote innovation by making application procedures simpler and more efficient. The GPPH application is free of charge.
The National Intellectual Property Office of China (CNIPA) is not a participant in the global project, but may have particular regulations with other territories.
Applying for a Patent across Europe
The European Patent Office has its headquarters in Munich, Germany. Its official filing languages are English, German and French. If you apply for a patent at the European Patent Office, you can select the countries where you want to apply – this will be your first step. By paying the patent fee in the respective countries, you confirm where your application should be made to. If the respective national patent law allows it, the EPO allows your application to be made in a single language - either via the Patent Office in one of the contracting states, in one of the official branches of the European Patent Office or via an online form.
A European patent does not automatically cover all EU states. Each patent evaluation service will grant or reject a patent. This applies to individual EU member states, i.e. those which you selected when filing the application. The patent is equivalent to a locally filed patent once it has been published in the European Patent Specification.
The Patent Cooperation Treaty: WIPO
The World Intellectual Property Organization (aka WIPO) makes it possible to make an international application for 152 member states at once. The Patent Cooperation Treaty works in two phases: international and national. In the international phase, the international authority examines the invention for the criteria listed above. You have to kick off the national phase yourself. In this case, you’ll need a translation of your application into the official language of the countries you’re filing in. Regulations and fees also depend on the country of application. National patent applications must be received within 30 months.
Applying for a patent: the costs
The cost of a patent varies hugely. First, you need to consider how many patents you’re filing for. Each one will cost something, and each one will require maintenance whilst you’re making the application. A ballpark figure for doing the application yourself is $900. This figure is much less than the cost of getting a lawyer to help you with the application, which can cost upwards of $10,000, over ten times the DIY option. However, the success rate with professional help is much higher, and so you can also ask yourself the question of if it is worth risking a smaller (but not insignificant) amount of money, or if you want to spend more but have a bit more certainty.
There may be potential scholarships for you and your patent application, but this depends not only on where you live and where you’re filing for your patent, but also factors such as patent category. It is worth investing time into researching these possibilities, because they may help you down the line.
What can influence the cost of a patent?
Not all patents are the same, and for good reason. Lots of important factors determine how much you have to pay for your patent application. Take a look at the following:
- The type of patent. This is the part that affects costs the most, so a simple invention such as a coat hanger will cost around $5,000. More advanced technological inventions such as brain imaging machines cost more, upwards of $16,000.
- Who is applying for the patent? An individual will generally pay less than a business, and businesses will pay varying amounts too. It makes sense that small businesses have to pay more than an individual, but less than a big business.
- The level of technology. Similar in determining the type of patent, the level of technology will also play a role in the price. An invention which is high technological, requiring lots of research will be more expensive than something which is simpler, and didn’t need as much research put in.
- How many applications and where? As mentioned before, making several applications in several countries incurs more costs, not only because of the patent fees, but also because of admin fees such as translating your documents.
How to patent an idea: the checklist for how to file a patent
A patent application is a time-consuming and often costly procedure. Making mistakes in the application forms or missing a deadline puts you at risk of your application being rejected. The following checklist is helpful as a summary of the most important points for filing a patent.
First and foremost, you have to make sure that your invention meets the patent criteria. Depending on which country you are filing in, this might be a little different, not only because different products exist in different markets! Make sure your patent is novel, useful, non-obvious, and kept confidential, aka not in public knowledge. This can be hard if you’re excited about your invention or want to market it right away, but it is a crucial step to remember!
The next step is deciding whether you want to apply for the patent all on your own, or getting help from an attorney. It is not a requirement to get help from an attorney, unless you are filing for a patent in the US from overseas. Now it is a requirement to get help from a registered attorney. However, because patent applications can get complicated quickly, and because you’ll sometimes have to use particular wording in order for your application to be approved, it is a good idea for anyone filing a patent to get expert help.
Another thing you’ll need to do before you can make your patent application is to make sure your financial base is covered. How are you financing your invention? How are you financing the patent? These are really important elements of your product planning, because people may be curious to know about this in the future, let alone attorneys and those part of the path to your patent application. Ways of financing your patent include scholarships, grants, investors, and savings. Be clear on how you want to do this, as attorneys in particular may need to know this for your application.
Application in the US
Having done a good amount of research before your patent application, it is now time to file your patent application! If you choose to file your US application online, you will use the TEAS system.
The TEAS system has a fee of $225 (as of August 2019), with really strict requirements. A full list can be found on the Trademark Manual of Examining Procedure’s website but this really is the nitty-gritty, and it can really help to get an attorney or expert in this field to assist you.
Once you have submitted your form online via TEAS, you can track your application to see if further documents are needed. You can do this via TSDR (Trademark Status and Document Retrieval), which is the service you can use to get information about the status of your application. Furthermore, you can download or view documents for your pending application. You’ll need your trademark or registration number to access this information.
The TSDR make clear that applications should be monitored by those filing them to check the status of them in case they need to take action. The USPTO will prompt applicants to take action via the status update of the patent. The suggestion is that when an application is pending, an applicant should make sure to check on the application every 3 months. This is so you do not miss important information of vital updates to your application. Failure to act could jeopardise your application.
You can apply in paper form, and request these forms at the Trademark Assistance Center at 1-800-786-9199 (1-571-272-9250), but the TEAS website states that paper forms take longer to process than the online applications.
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