- August 7, 2018
- Posted by: Andrew Caska
- Categories: Patent Attorney News, Patenting Basics, patents and business
Earlier this month IP& was invited to present to Engineers Australia Newcastle about patents, and in particular, what Engineers need to know about patents.
We entitled the talk “Inventioneering – navigating the patent system” – because engineering, perhaps more so than any other profession, does involve developing new and inventive solutions to technical problems which often does involve navigating patents such as seeking freedom to operate or securing patent rights for an invention.
On a personal note, as an Engineer myself it was a great privilege to present and, in fact, I became a patent attorney by picking up a leaflet at a similar event run 10 or so years ago.
Patent basics and how to patent have been covered elsewhere on our website. However, there were a few points we touched on that were of particular interest to the audience and we have provided these below.
Using the Patent Databases for Ideas
The patent databases (such as Google Patents, Espacenet and Patent Lens) are an excellent source of ideas – some great ideas, and some terrible. Almost every problem has been addressed in one form or another from sensors, biomechanics, conveyors etc. You can fairly easily search these databases using keywords (i.e. conveyors or directly searching a company name of a known manufacturer) and start to build up a knowledge bank.
This information can be really valuable to gather background knowledge for new projects and establish the state of the art. In fact, we would suggest that a strategic patent landscape review is performed at the outset of any new design project – why reinvent? Or worse still, why invest in R&D only to find out that another company has a patent already in place.
One tip we would suggest, is actually looking at the background section of patents (the part usually on the front or second page) and see what problems are being addressed? Are the problems the same as the problems you are addressing? Will you solve the problem in the same way or a different way?
IP& often does get involved in the inventioneering process to help steer R&D projects in light of known information and navigate around existing patent rights. Remember, it is much more cost effective to spring board from others than to start from scratch.
Also, it is very a expensive excercise to spend, say, 2 years on R&D – only to find out you might infringe an existing patent and perhaps need to secure a licence. So, it is worth doing some patent searching to establish freedom to operate as is further outlined below.
One of the biggest mistakes Engineers make is only searching the Australian Patent Search Database (AUSPAT). AUSPAT is limited to Australian patents and applications only and therefore is only useful for searching the Australian jurisdiction.
We do use AUSPAT for infringement/FTO (Freedom to Operate) searching in Australia. We check for currently active patents and determine which patents may be relevant and then review the patent claims to see which patents may be problematic.
It is also a good idea to also search Patentscope (the WIPO PCT database) to see if there are any relevant pending international (PCT) applications that could be filed into Australia, especially if you are aware of a competitor that regularly files into Australia.
Now, for novelty searching (which is a different type of searching ) we usually don’t start with AUSPAT. This is because when considering if an invention is “patentable” – you need to check against prior art (prior patents, information, books, journals) that is available globally.
Good starting points for novelty searching include Google Patents, Patent Lens and Espacenet. Google Patents is easy to use and you can use simple keyword searches (i.e “conveyor” or “sensor”) to get surprisingly good results. Next in line is Patent Lens, personally this is my favourite – as you can choose a detailed view to flick through the drawings without downloading the patent, and finally Espacenet – Espacenet is probably the most complete free database.
None of these databases are perfect – but, in 80% of cases – if you look in the right places you will find something similar to your invention. This then begs the question – if I have found a similar prior patent (or document, product etc) – is my invention still patentable?
If you do get stuck with searching – get some help. Every search I have undertaken – I have found something similar and sometimes this results in a full rethink of the invention or project.
What might be Patentable?
A standard patent in Australia requires an invention to be novel and exhibit an inventive step (similar requirements exist overseas such as in the USA). I am not going to go into Australian patentability requirements here in any detail.
However, there are two things that Engineers should know – firstly – the invention must have some new technical feature, method step or new combination of technical features or methods steps, and – secondly – the new technical feature, method step or combination thereof needs to provide a neat technical advantage over what is already known. Better still, the new technical feature, method step or combination thereof should solve an existing problem in a better way and the advantage should be an improved function, lower cost, ease of manufacture etc.
If you do have an invention with these requirements, then it is worth booking an appointment with a patent attorney to make an assessment and give you a learned opinion in relation to patentability.
Need a Hand with Patents?
IP& specialist intellectual property attorneys with a focus on patents in the engineering and high-tech fields.
We are always happy to have an initial chat to our engineering colleagues and assist you to navigate the patent system.