When recording your idea for patent purposes, it is usual to prepare an Information Disclosure Statement which can greatly assist your patent attorney in preparing the patent specification, especially with your commercialization goals in mind.
If you want to have a definite view on the patentabilty of your App idea and software patenting process, please read 5 Signs Your Software Ideas Can be Patented.
This article suggests several important considerations for inventors when recording their ideas for patent purposes. You can seek the help of experienced patent attorneys to record your ideas in the most effectual manner.
1. Outline of the invention
Given that patent specification is required to fully describe the invention, it is important that you accurately record the outline of the invention for your patent attorney.
Specifically, you should list the purpose of the invention and then provide a full description of the essential parts and features of the invention. If applicable, you should also describe how your invention works.
The minimum threshold for patentability in Australia (by way of the Innovation patent) is anything that “makes a substantial contribution to the way the invention works”.
As such, you should list any features and functionality that at least make a substantial contribution to the way the invention works. You don’t need to go into exhaustive detail as to what could be couched in terms of workshop improvements or mere design considerations given that these do not materially affect the patentability of the invention.
You can provide your patent attorney with guidance by suggesting the features that you believe are unique and novel.
Drawings or sketches, if available, are a great way to describe the invention and may swiftly bring your patent attorney up to speed, especially for mechanical type inventions.
It is usual for patent specifications to cover the main aspects of the invention (referred to as the preferred embodiments), but potentially also to cover variations or potential modifications (referred to as alternative embodiments) so as to broaden the technical breadth of the patent specification. Describing potential alternatives in the patent specification assists in specifically claiming workaround attempt by your competitors.
2. Outline Current Similar Products
When preparing a patent application, your patent attorney should prepare the main claim of the patent that is at least novel/new in light of any prior art (that is, publication or use anywhere in the world prior to the filing date of the patent application) that you or your patent attorney know of.
The general strategy when filing a patent application is to claim the invention as broadly as possible wherein, should the examiner uncover any hitherto unknown prior art, the scope of the main claim may be tweaked so as to be differentiated from the prior art of record.
As such, for the purposes, you should disclose to your patent attorney if you know of any related prior art so that the main claim can be prepared accordingly.
Additionally, describing the benefits or advantages of your invention in light of existing arrangements will help your patent attorney describe the problem/solution in the patent specification.
3. Future Plans for the Invention
It is essential that you describe your future plans for the invention to your patent attorney, because the patent application process should underlie your chosen commercialization strategy.
For example, if you plan to make future improvements in the invention, it would be wise to start off with the filing of the provisional patent application, given that, generally, the provisional stage is the only stage where improvements may be captured.
Furthermore, if you plan for patent protection in foreign countries, but are not yet sure which countries would be of interest, it would be beneficial for your patent attorney to recommend the PCT application which provides a period of international patent pending prior to having to choose countries of interest for eventual patent protection.
Finally, it is important that you carefully disclose the applicant details to your patent attorney.
When filing a patent application, one must nominate the Applicant for the patent application. The Applicant is the person who derives a valid legal title to the invention from the inventors which may be by way of employment agreement, assignment, or the Applicant being the inventor themselves.
In general terms, ownership of a patent is essentially an accounting question given that a patent is essentially an asset and no different to any other kind of assets.
As such, some people look to avoid holding the patent in the name of an operational company in case the operational company gets sued in which case the IP assets could be lost.
Some applicants utilize a nonoperational shelf company which may hold the IP rights and grantor license the use of the invention to other authorized users.
Remember that during the life of a patent application/patent, ownership may be amended through a process of assignment. In this regard, it is important to keep a lookout for capital gains applications wherein, if the invention suddenly becomes valuable, the subsequent assignment of the patent will trigger a capital gain subject to capital gains taxation. As such, it is advisable to delay any formal valuation of the IP until such time that the ownership has been transferred to the correct parties.
When it comes to joint Applicants, each applicant holds the patent/patent application in undivided shares meaning that each applicant can exploit the invention separately of the other Applicant but may not encumber or otherwise dispose of the patent without the permission of the other Applicant.
As such, if proportionate holding of the patent is required, a company holding of the patent allows for the proportionate ownership of the patent through the issuance of shares proportionally.
Furthermore, when filing a patent application (except for the provisional patent application for which it is not required) it is a requirement to nominate the inventors for the application.
Inventorship is purely a question of fact and, generally, no discretional leeway is allowed.
It is important to remember that incorrect inventorship may be grounds for the invalidation of a patent.
In general terms, the test for whether a person should be recorded as an inventor is the “but for” test, wherein the hypothetical question to be asked is whether the claimed invention would have arisen “but for” the contribution of the person in question.
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About the author.
Nicholas Milne is an expert patent attorney with the leading Australian intellectual property firm Patentec. Nick has worked with 100s of patents to secure IP rights for his clients. Nick holds a Bachelor of Science (BSc) in Electrical Engineering with First Class Honours, Bachelor of Laws (LL.B) and a Master’s Degree in Intellectual Property (MIP)
You can contact Nick at: www.patentec.com.au/contact
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