Whilst there are many considerations when filing a patent – there are two things are the most important.
The first is the IP strategy and the second is patent drafting.
Many inventors and companies that are new to patents (and sometimes the Attorneys advising them) – become very focused on “filing”. Filing is simply an administrative process – and means nothing without good strategy and even better drafting.
I am a huge proponent of IP strategy. The what, how, when and why of intellectual property. When considering the filing of patents, strategy is even more important in comparison to other IP rights as the risks are much higher – more to win and potentially more to lose.
I’ll sometimes get a call from a company or inventor really keen to file a patent. Sometimes they have been whipped into a frenzy by another Attorney – file it first, or lose the idea. File now and consider strategy later. Scaremongering usually. Although, if you are about to release your invention – then yes, you may need a rapid patent filing indeed.
However, speaking to such companies or inventors, a few simple questions quickly reveal to us that the company or inventor is either not ready to file a patent or perhaps should not be racing down the patent path.
Such questions include – have you already disclosed your invention? Have you undertaken a patent search? What part of the invention do you want to protect? How do these parts relate to what might be a competitive advantage for your company? Might a registered design be better? Is it even patentable? Perhaps a trade secret is better.
These type of questions are in my view, essential to fleshing out an IP Strategy – that is, what IP is present, what you may or may not be able to protect, the options at hand to protect and defend your IP, and how this may provide you with commercial advantage. Because this is why we do what we do, it’s not about obtaining a patent, design or trade mark; it’s ultimately about a commercial advantage in business.
I encourage all of our clients, new and existing, to take the time and make the investment in IP Strategy. For those starting out, we offer a fixed cost session that can be booked at the following link > https://calendly.com/caskaip/ip-strategy-session, and for larger and more complex projects we offer strategy packages including more detailed interviews, ideation, searching and reporting.
I often get asked how much it costs to file a patent? My response is the government fee is $370 for a standard patent application – but, we don’t charge to file patents we have just drafted – it’s free. It takes 10 minutes.
I’ll usually then leave a pause…but, the drafting of the patent specification can be anywhere from $5,000 to $15,000. That’s what we do, we take good strategy and turn that into a great patent specification.
The writing of a patent is quite unique in terms of legal documents as there is no set precedent to copy and amend. Patent drafting is completely different to other legal documents such as contracts that all have common elements that may be added and amended to suit. Each new patent specification is a completely new document – and it needs to be – as it will be describing and defining an invention that is and must be new.
A patent specification needs to meet many legal criteria including defining the invention and describing the invention in sufficient detail so that another person skilled in the art can work the invention with only reasonable trial and experimentation. In other words, you need to define what elements of the invention you are claiming for your legal monopoly right and then provide working of examples of how this could be achieved. It’s more complex than this, but you get the idea.
Usually from the IP Strategy, we will have good idea of what the “new” parts of your invention are and how these parts compare to the prior art such as prior patents. We can then use wording to help “navigate” the prior patents to distinguish your invention from the prior patents. Without this “navigation”, you can hit a roadblock during the patent process that cannot be overcome and because it is difficult to make changes to patents after filing, you can become stuck and unable to progress.
It also important to consider how another party may change your invention. So, for example, if another company wanted to copy your invention – how could they? What could we do with the drafting to ward off potential copiers?
Lastly, patents can last up to 20 years. So, it is important to consider how your invention may be changed over this period. For example, if certain parts could be automated or 3D printed, then the patent specification could include forethought as to these possible changes.
Oh, and don’t forget the audience of a patent specification – a patent examiner, a judge, another Attorney and a potential competitor. A specification for a standard patent will eventually be published for all to see and you would be surprised with the rigor that patent specifications are reviewed, especially if the invention is of high commercial value or the patent is challenged such as via Court proceedings.
As you can see from the above – there is a great deal of thought that should go into patent drafting to get the best results. I don’t believe that enough time and budget is allocated to patent drafting and often it is lumped with a filing process. But, the drafting really is the most important part, and every word and drawing needs to be carefully chosen to stand the test of time and deliver you a commercial return on investment.
If you do intend to file a patent. Start with IP Strategy and then good drafting. The filing is then a simple administrative process to formally record your rights at IP Australia and begin the remaining process of obtaining a patent such as examination, prosecution and grant.