Foundations of IP Strategy

While it is advisable to engage a professional to help file the patent application, certain preparatory steps can help reduce costs and possibly strengthen the quality of the patent that is ultimately issued. This process includes doing your homework before you start the patent-filing process, which, in this module, is referred to as pre-filing steps.

PRE-FILING STEPS

1. Write out your idea in detail

   It is important to write a detailed description of your idea. Describe how the invention works and try to explain what makes your invention new and unique. Draft your description as accurately and completely as possible so that it reads like a technical definition of your invention. This process will not only allow you to have a stronger patent but it will help focus your prior art search (as described below).

2. Check if someone else has already filed a patent over your idea or has disclosed the idea in some publication

   Since novelty is a prerequisite to a patent being filed, no one else can have come up with the idea first. To find out whether you are, in fact, the first person to have had the idea, you should start by looking at searchable patent databases such as Google Patents to search for existing patents that anticipate your invention. You should also look at technical books and other relevant publications to see if someone else has already come up with your idea and shared it with the public.

   If a patent has already been filed that anticipates your invention, or if there are other public materials that describe key aspects of your invention, then you may not be able to secure a patent. If you discover this early in the process, you will save yourself a lot of time and money.

   It is important to note that doing a prior art search is not mandatory to filing your patent, but if you conduct one and you find something that is relevant to your invention, you may have to disclose its existence when filing for a patent. For example, in the United States, a failure to disclose could have adverse consequences for your patent (as we will discuss further below).

3. Think about your business plan

   Figure out what your target markets are and determine which ones are the most vital for you. This consideration can guide where you eventually file for patent protection.

   Ask yourself the following questions:

   • Do you want to manufacture in that geographic market? 
   • Is that a market in which you hope to distribute products?
   • Will you have many competitors in that market?

   However, just because you may want to distribute products in a particular market, does not mean that you should automatically consider filing a patent in that jurisdiction because patent filings are costly.

   A better way to approach this issue is to consider the following:

   • How much revenue will you derive from selling the product in that market?
   • Will you have the resources to enforce your patent in that market?

   Think now and for the future. If the target market is small or has a weak IP enforcement regime, you may want to forego the time and money required to file a patent in that jurisdiction and determine if other forms of protection might be available to help you achieve the same or similar goals. Otherwise, you may have to be prepared to address the consequences of not having the requisite IP protection in that jurisdiction.

   In other words, do a cost-benefit analysis. Consider the potential for revenues in that market and the nature and the strength of the judicial system and its enforcement mechanisms versus the cost of filing, maintaining and enforcing the patent in that jurisdiction.

4. Additional considerations for drafting your patent

   It is important to think about things such as the various fields of use for the patent and identifying possible “work arounds.”

   For example, your idea may apply to areas outside of your core business and hence you may want to talk about your invention in broader terms to be able to generate revenue from licensing it to someone who doesn’t compete with you but who wants to practise the invention in a different type of business.
   
   Also, if you think about how someone could work around your patent, you and your lawyer can draft the claims in a way that makes it harder for someone to design a product that infringes on your patents.

   It is important to balance the scope of your patent claims.

   While having a patent that has the broadest scope is the most advantageous in terms of trying to assert that someone is infringing on your patents, the downside is that really broad patent claims may be invalid. The broader your patent coverage, the harder it will be for a competitor to work around your invention, but your patent may be more susceptible to challenges.
   
   The broader the patent, the more likely it is to have been anticipated by the prior art. In other words, if you try to claim protection over too much, you run the risk that someone else might have already come up with something that you are trying to protect. This may render your entire patent or portions of it invalid.

   Think about anyone who contributed to your ideas/invention before filing for the patent.

   These co-inventors may have rights in respect of the patent (unless they have been assigned under contract) but, nonetheless, the identity of all inventors should be listed in the patent application).
   
   A failure to disclose all of them might result in your patent being invalidated in some countries.