Patentest

How to patent an invention

israel — Wed, 15 Nov 2023 10:41:23 +0000

Getting a patent on your invention can be a complex, expensive and long process. Whether you are an inventor or an entrepreneur building a startup considering how to get a patent in order to protect your idea, or a company manager trying to build an IP portfolio based on your firm’s technology, Here are answers for some basic questions that can help you in getting your idea/ invention become a patent.

1. Can you get a patent on an idea?

Yes, you don’t have to develop, manufacture or build a tangible physical working product in order to get a patent, but simply give a full detailed technical description. Many granted patents don’t develop into actual products, but still have economic, commercial and legal value.

3. What makes an invention patentable?

Patents laws differ from country to country but in most cases there are few terms and conditions that if met make an invention patentable:

Novelty – The invention must be completely and utterly new and unknown before you file the patent application. This condition is universal and comprehensive – any kind of publication (patent or other), anywhere in the world, by anyone (including yourself) is considered prior art that prevents you from getting a patent.
Inventive step (also known as Non obviousness) – There must be a significant difference between your invention and what is already known to persons skilled in the relevant technological field. For example putting two or more well known technologies in one device may not necessarily make the invention patentable.
Industrial Utility and applicability – The invention can be produced, manufactured, utilized etc. in the relevant industries.

4. Does my invention exist, and if so how can it affect my chances of getting a patent?

Since one of the basic conditions to get a patent is novelty, it is important to conduct a patent search before rushing to draw and file a patent application. Because patent informatics is a very complex field and a large portion of relevant patent data can be found only in paid dedicated search engines, It is advisable to conduct a self research and then turn to a professional patent search service.

If the search yields findings (known as “prior art”) that are identical or very similar to your idea (patents, applications, products, articles etc.), it is advisable to consult with a patent professional regarding your chances to get a patent in view of that prior art. At that point you will have to decide whether to continue as planned or go back to the drawing board and make significant changes to your idea/ invention.

5. What are the implications of finding enforced patents identical or similar to your idea?

In many cases a patent search report will disclose that there are patents or patent applications under examination, identical or similar to your idea. In case you are interested in developing your idea into a product and selling it (or in a case of existing product you want to import and sell), it is very important to first conduct a freedom to operate search, in order to establish that there are no enforced patents that might prevent you from doing so in the markets you want to operate in.

6. How long does it take to patent an invention?

It depends, usually the first steps of searching, researching, drafting and filings takes months. The examination process can take anywhere between a few months to a few years.

7. What is the scope of protection that a patent will give you?

In most countries patent rights are given for 20 years (starting from the application date).

In that time any other entity beside the patent owner will be prohibited from using the invention in any way (produce, importing, sell, etc.) in the country territory.

As mentioned, the protection is territorial, there is no such thing as an “international patent”. In order to protect your invention you will need to file and get a patent in each and every country you want to do business in. There are international mechanisms (PCT) that help inventors, entrepreneurs and startups in that process, but even then – at the end of the line there is a national phase – a submission and examination in each relevant country.

8. How to patent an idea? – What are the basic stages?

These are the basic stages that most inventors/ startups usually go through on the way to get an idea patented:

Self Search using open free source tools (google, google patents, espacenet etc.)
Patentability search using a patent search company.
Consulting an IP professional (IP consultant, patent agent/ attorney etc.), regarding if and how to proceed.
Choosing the most suitable patent filing path (Provisional US application, PCT, national application etc.).
Draft a patent application describing your invention and file it in the relevant countries (it is very important to use the services of a patent attorney/ agent).
Patent examination- Many patent applications are not approved immediately. After a rejection the applicant may amend the claims and send his arguments for convincing the examiner that his invention is patentable (again it is highly recommended to use the services of a patent attorney/ agent, and professional search companies in case that changes are needed in the original application).
Final approval or rejection.
In case of approval – Pay maintenance fees for the duration of the “patent life” (20 years), in order to keep the patent valid.

הפוסט How to patent an invention הופיע ראשון בPatentest

Dene Parker

israel — Mon, 31 Jul 2023 15:56:13 +0000

Our dear head of Patentest UK Mr Dene Parker has sadly passed away after a short period of illness.

Our thoughts goes to Dene’s family at this difficult time.

Dene established Patentest in England after returning to England from Dubai. With his professionalism, his positive manner and his rich humor, Dene quickly won the trust of his customers.

We are grateful for everything that Dene has done for Patentest in the years we have had the privilege of working together with him.

הפוסט Dene Parker הופיע ראשון בPatentest

Patentest Announces New Partnership with IAMIP

israel — Tue, 06 Jun 2023 11:53:39 +0000

The leading European patent information and analysis group Patentest is excited to announce a new partnership with IAMIP, a fast-growing global patent platform.

This partnership signifies a notable milestone for both companies and paves the way not only for growth and innovation in the Intellectual Property landscape, but also for more exciting opportunities for Patentest clients.

This collaboration brings together the experience and the capabilities of Patentest as experts in patent information and IP strategy with a patent platform like IamIP, thus leveraging their combined resources to deliver improved service to the clients.

The two companies aim to create a synergistic alliance that will enhance the experience of the customers within the patent information service and platform.
“I am confident in the development of the IamIP platform and in the services and support we can provide from Patentest, so I think that this partnership provides a great opportunity for both companies and our clients.” Said Zack Amir, co-founder of Patentest.

The key highlights of this partnership include:

IamIP users will be able to have a direct access to professional patent information services through Patentest. Users will be able to get support setting-up their monitoring, but also advice regarding other patent information services. Patentest clients will be able to effectively continue analyzing, monitoring, and collaborating using the IAMIP patent platform.
- Explore Patents: Extract information from the IamIP search engine that handles over 131 million patents and 338 million legal events, updated weekly!
- Create Monitorings: Receive weekly notifications on your competitors or technical areas of interest and never miss out any opportunity or threat.
- Build Knowledge Database: Store any number of patents and files in a collaborative environment with worldwide accessibility.
- Exchange Tasks: Get more done with IamIP Tasks, manage, edit, and share patent tasks from anywhere, at any time, with to-dos that syncs the entire organization.
- Visualize Data: Identify actionable insights to improve your R&D decision and deliver better ROI.
- Evaluate Ideas: Capture and evaluate new ideas with inventors and decision makers in a digital environment.
Patentest clients using the IAMIP platform will be able to continue monitoring their technology, receive alerts for changes in our reports, analyzing and collaborating with their colleagues and/or external resources, and of course will get full support within the platform, without them needing to find complementary solutions somewhere else, thus making it easier having their projects aligned in one place. The right information, for the right purpose, at the right time will be available to them.

Patentest clients who will decide to use the IAMIP platform will ultimately save time and money. They will reduce the risk of missing valuable information and will increase the possibilities to make sound business decisions.

“If we see that we can help clients with the monitoring and other services then we know we have succeeded because we see that the client actually needs it. We have the experience, tools, training, method, and now a great patent platform that can help the users every step of the way.”– added Zack Amir

“IamIP´s already strong collaborative patent information platform serves thousands of engineers and scientist today,” said Dimitris Giannoccaro, IamIP´s co-founder and CEO. “Our partnership with Patentest makes sense for our customers who need support from an IP expert and Patent search specialist during the journey to stay ahead of competition.”

By combining their knowledge, resources, and vision both IamIP and Patentest are confident that they will be better positioned to address the evolving needs of their customers in the Intellectual Property space.

About IamIP:
IamIP is one of the world’s most innovative patent search, monitoring & analytics platforms. With a deep understanding of the value of IP assets, IamIP empowers companies and law firms to collaborate in order to understand industry trends and competitor activity, drive business impact and boost innovation.
IamIP’s belief is that innovation is at the heart of progress and success. The company’s mission is to help organizations leverage their intellectual property to drive growth and streamline the entire IP lifecycle. With the help of sophisticated and intuitive business tools, companies can easily manage, analyze, and visualize patent data in combination with business information.
With presence in 3 different countries and over 5000 active users worldwide, IamIP enables global access to patents and provides reviews in 80 different languages.

About Patentest:
The patent information company Patentest was founded in 2004 in Israel under the trademark of New-Tone patent search. The company has quickly established itself as the largest patent search company in Israel. Over the years the company is established in Sweden, United Kingdom and in the USA. Patentest’s mission is to bring inventors closer to the world of patents and spread the know-how and knowledge about Intellectual property rights in general.

הפוסט Patentest Announces New Partnership with IAMIP הופיע ראשון בPatentest

What is a patent and IP strategy and what is the right strategy for me?

israel — Sun, 21 May 2023 14:08:28 +0000

In its broader definition, Intellectual property refers to intellectual creations, such as inventions; literary and artistic works; designs; and commercial symbols, names and images used in commerce. These creations can be commercially protected by patents, trademark, design and copyrights.

What is a patent and IP strategy

In our modern economy, intellectual property (IP) is an asset and a tool that should be created and managed as any other economical asset. An IP strategy is a long term plan, specifying the optimal way to acquire, manage and commercialize a single or multiple IP assets. A good IP strategy should answer questions such as – What type of IP protection is needed? Does my idea qualify as a patent? What is the optimal way to get protection? What is the extent of protection needed ? What is the best way to commercialize and monetize my IP asset? In What countries or areas do I need to get protection? What are the costs of acquiring and managing IP? etc.

Developing the right IP strategy

What is the type of IP needed?

The first step is to determine what is the type of Intellectual Property protection that you need and the exact scope of protection it gives:

A patent protects an invention such as a product, a process or an apparatus. Patents allow the owner to prevent third parties from making, using or selling the invention without their owners’ consent. It is important to remember that patents are territorial – A patent is valid only in the country it was submitted and approved, for a specific time period (usually 20 years), and it is granted by a national or regional patent office.
Utility models can be registered in some countries, to protect technical innovations which might not qualify for a patent.
Copyright protects creative and artistic works such as literary texts, musical compositions and broadcasts, against unauthorised copying and certain other uses.
Trade marks are distinctive signs identifying brands of products or services. They may be made up of two or three-dimensional components, such as letters, numbers, words, shapes, logos, pictures, or even sounds
Designs and models protect a product’s visual appearance, i.e. its shape, contours or colour.

Search and research

In order to be patentable, an invention must be industrially applicable, new, and involve an inventive step over prior art, i.e. if your invention has already been publicly disclosed in any way or form, you cannot get a patent. Therefore, you should conduct a thorough search, using one of the countless free and open search tools. If you’re not professionally trained in Informatics or patent searches, it’s recommended to retain the services of a specialized patent research company, which uses search professionals, with access to professional paid databases. The patent research company will provide you with a search report that will help decide if and how to proceed.

At this stage, it’s also advisable to conduct a commercial search, in order to obtain a good picture of markets, potential competitors, risks analysis, production and marketing costs, similar IP assets transactions etc.

What is the commercial end goal – Produce, Certify or Sell

After analyzing all the information above, you should decide on the long term business plan – Am I going to turn my invention into a product, to produce and sell it independently? Am I planning to sell my patent or certify it to another party? If so, at what stage and what would be the terms?.

Selecting potential markets

An important decision to be made is in which countries you’d like to protect your idea, depending on your goals and resources. As mentioned above – patent protection is territorial, i.e you must file your applications in each and every country you want to protect your patent, paying fees to each of them.

After making this decision, you can choose what kind of specific protection you need, according to the patent and IP laws in each country (Utility patent, Design patents etc.)

What is the Most Suitable IP Filing Path?

First, It’s recommended to contact a patent attorney, agent or IP consultant, in order to go over the findings of your search. Together, you can conclude on the most suitable filing path.
Here are some popular examples –

File the application in one single country.
File a provisional application in the US – An application with a general description of the invention, which is not published or examined, and is used only to secure the filing date. The provisional application has a pendency of 12 months (no extensions). Therefore, the applicant must file a corresponding nonprovisional application for patent. A provisional application provides a one-year extension, securing the applicant an additional year to perfect his invention, raise funds, determine sales potential and find interested parties for licensing, all before filing a nonprovisional application.
File an application in multiple countries. There are two main ways to do so –

1. File an application in every country in which you need to protect your invention (simultaneously or according to the “Paris Convention“ – 12 month after the first submission), while following each country’s patent submissions laws, rules and regulations, and paying multiple sets of fees.
2. File an application under the PCT (commonly known as international patent application), and later on (up to 30 month), proceed to the National Phase: start seeking the grant of your patent in each national (or regional) patent office of your choosing.

Draft, File, Negotiate and Manage

You (or your patent Attorney/Agent) draft and file a full patent application, according to the laws and regulations of each regional patent office you chose. Then the examination stage starts – a process which is a form of legal negotiation, that may span a few months to several years. It’s important to remember that most applications get several rejections until finally being approved.

After your patent is approved, you will need to keep paying maintenance fees for the next 20 years. Failing to do so will cause your patent protection to expire. If you have multiple patentes in multiple countries, it’s important to track each single one of them, and pay all fees according to each country’s rules and regulations.

Commercialising and Monetizing – Stage 2

Being the owner of IP rights (patet, design, trademark etc.), is like being the owner of a tangible commercial asset. Beyond basic maintenance fees, there are many possible choices and actions to make – Decide how to best monetize your rights (sell, licence etc.), search for potential infringements, decide on a yearly basis whether to continue paying fees, search for new ways to commercialize your IP rights and so forth.

הפוסט What is a patent and IP strategy and what is the right strategy for me? הופיע ראשון בPatentest

What are the requirements that make an invention patentable?

nishnish — Mon, 20 Jun 2022 06:49:16 +0000

The UK, US and the European Patent Convention (EPC) – Part 2

In the first part of the article, we have briefly discussed basics patents terms (What is a patent right and scope of protection, Priority date, Prior art, The European Patent Convention – EPC, etc.) and
Layed out the 3 basic conditions that make an invention patentable – :

1. Capable of industrial application
2. Completely new
3. Non-obvious/ Involves an inventive step

We then looked at the first condition – Industrial applicability, Utility, and Usefulness as they are defined in the British (Sections 1-6) and US (Chapter 10) patent laws and in the European Patent Convention – EPC (Chapter I).

In the second part, we will dive into the subject of the second condition any inventor must meet in order to get a patent – Novelty.

Novelty

In order to get a patent on an idea, it must be completely and utterly new. In most cases, the patent examiner will spend a large part of the examination process searching different databases (patent and non-patents) to make sure the invention described in a patent application is completely original, and there is no prior art that deems the invention as not new, that is:

Any kind of discloser, anywhere in the world that was made available/ published before the patent application was first filed (patents, patent applications, books, scientific and technological articles, detailed news articles or internet publications, products, public lectures, etc.).

There is a great similarity between the UK, and US laws, and the EPC with each having its small distinctions.

1. The UK’s patent law

The British law definition of novelty and the prior art is simple and straightforward (section 2):

1. (1) An invention shall be taken to be new if it does not form part of the state of the art.
(2) The state of the art in the case of an invention shall be taken to comprise all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way.
(3) The state of the art in the case of an invention to which an application for a patent or a patent relates shall be taken also to comprise matter contained in an application for another patent which was published on or after the priority date of that invention, if the following conditions are satisfied, that is to say –
(a) that matter was contained in the application for that other patent both as filed and as published; and
(b) the priority date of that matter is earlier than that of the invention.

In simple words – any public disclosure of the invention, in any form, anywhere in the world before the application priority date, is considered prior art.

The British law does stipulate in subsection (4), some explanation regarding prior art that was based on information “..obtained unlawfully or in breach of confidence by any person…from the inventor or from any other person to whom the matter was made available in confidence by the inventor…” up to six months before the inventor filed his application.

2. The US patent law

The US law discusses novelty in section 102 (of Chapter 10).

§102. Conditions for patentability; novelty

(a) Novelty; Prior Art.—A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

As can be seen, the definition of novelty is similar to the British law however, the US law continues to stipulate wither exception:

(b) Exceptions.—
(1) Disclosures made 1 year or less before the effective filing date of the claimed invention.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
(2) Disclosures appearing in applications and patents.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

That is, much wider protection is given to the inventor, for example, if an inventor publishes his invention, he has 1 year of grace to file a patent (unlike Europe and the UK in which even publications made by the inventor are considered prior art, preventing him from getting a patent)

3. EPC

Almost identically to the British law, Article 54 of the EPC concludes:

(1) An invention shall be considered to be new if it does not form part of the state of the art.

(2) The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.

Very similar to the British law there are few limited exceptions protecting the inventor in article 55, the EPC stipulate:

(1) For the application of Article 54, a disclosure of the invention shall not be taken into consideration if it occurred no earlier than six months preceding the filing of the European patent application and if it was due to, or in consequence of:
(a)[ 45 ] an evident abuse in relation to the applicant or his legal predecessor, or
(b) the fact that the applicant or his legal predecessor has displayed the invention at an official, or officially recognized, international exhibition falling within the terms of the Convention on international exhibitions signed at Paris on 22 November 1928 and last revised on 30 November 1972.

Patent novelty summed up

The novelty principle is simple and direct – any prior art (even by the inventor) will not allow you to get a patent.

This is why conducting a patentability search prior to filing is crucial as it can save a lot of time and money and maximize your chances of getting a patent –

Professional patent searchers can locate the most relevant prior art by using paid databases and their technological and legal expertise.
A patentability search costs only a fraction of the whole cost of getting a patent.
Patentability search mimics the examination process, predicts the patent examiner’s findings, and is thus crucial in helping you to optimize your patent application.
It can eliminate or dramatically reduce the need for appealing and negotiating (thus saving more time and money).

In the next article, we will discuss the Non-obvious / inventive step condition, and how a professional patent search can help make sure your invention fully meets this condition.

הפוסט What are the requirements that make an invention patentable? הופיע ראשון בPatentest

The differences between self-patent search and a professional patentability search

nishnish — Wed, 01 Jun 2022 15:24:18 +0000

A well-known saying states that “amateurs rely on luck and hard work, professionals on knowledge, experience and effective work” or as Abraham Lincoln phrased it – “If I had nine hours to cut down a tree, I would spend six hours sharpening my axe” The first step in the long and complicated journey of getting a patent is an independent on line search followed by a professional patentability search (also known as – Novelty search and Prior art search).

The cost of a patentability search is only a small part of the cost of drafting and filing a patent in several countries (which can reach tens of thousands of pounds), but beyond that there are significant differences between self-search and a professional search.

1. Technological knowledge and experience in all types of search tools and databases

Novelty is the first main condition that an invention must meet in order to be patentable. People mistakenly think that existing products or other publications don’t stop them from obtaining a patent. A common mistake of inventors is to develop a product and then advertise it online with the thought that they can later get a patent. Another mistake is to think that only because there is no patent for an existing product in another country, they may get a patent and obtain exclusivity in their own country.

The truth is utterly different – any previous publication of the invention, anywhere in the world, in any possible way deem the invention as not novel and therefore as not patentable! A foreign patent (even from a century ago), a patent application (abandoned or in the process of examination), a product marketed anywhere in the world, the publication of a product that no longer exists, a scientific article, and even a sufficiently detailed web post – all considered as prior art – ie. previous publication meaning the invention can’t be patented!

Hence, in order to determine if an invention is patentable – the first action is a comprehensive search of all possible search databases (internet web, patent databases, professional literature and more). A professional patent searcher has the technical knowledge to conduct such a thorough search using search methodologies, queries using Boolean Operators and dedicated search tools and databases.

2. Legal knowledge in the field of patents – The ability to differentiate between relevant findings and those that are not

Another condition that an invention must meet is – inventive step (known as non-obviousness) i.e., it must contain an element that “is not obvious to a person skilled in the art”. The concept of “inventive step” is complex and sometimes vague. Patent examiners sometimes reject a patent application under this section in view of the existence of several findings that individually are not identical to the invention, but together prove that the invention has no inventive step. This is where the legal knowledge in the field of intellectual property of patent searchers comes into play.

During a search you will come across many publications that are similar / close to the invention. Technological understanding is not sufficient to determine whether they might prevent you from getting a patent or not (i.e. whether the invention has an inventive step over these existing publications). This is even more evident when it comes to analyzing and examining existing patents and patent applications. Many patents are phrased in professional jargon – a formal and complicated legal language – that is not always clear to inventor’s eyes.

The professional patent searcher has the knowledge and experience to analyze the findings, understand their essence, compare them with the invention and conclude whether they are relevant or not.

3. Use of paid patent databases and search engines – access to information that is not in the public domain

As noted above, the patent laws state that any prior publication of the invention prevents it from becoming a patent and that an invention must contain an inventive step to be patentable. In order to make sure that there are no previous publications that are identical to the invention or close to such an extent that it has no inventive step over them, one should also look in databases that are not accessible to the general public (those that specialize in patents, and others such as professional literature databases).

Moreover, many patent databases (such as Orbit Questel, Patbase and others) are powerful search engines with search capabilities that are not available in the free tools (translation capabilities, drawings display, classification search etc.). In fact, patent examiners themselves use these types of tools. Often inventors who are satisfied with an independent search using free tools, are surprised to find that their application is rejected based on a foreign and old patent that the examiner found in a short search in a professional database…

4. Objectivity and other added value

A professional patentability search has added value beyond all the above. Many inventors are so focused on their invention that they become blind to publications that an objective eye of a professional can easily locate. For this reason, professional search is a valuable tool in the process of recruiting investors.

Second, because a professional patentability search report is designed to predict the answer of the patent examiner, even if it is negative (i.e., no findings are found that prevent patent registration) it will help the inventor and his patent attorney in the drafting phase. This is even more true with reports containing identical or similar findings – Instead of investing a lot of time and money on an application that will be rejected, the inventor can “return to the drawing board” and try to change the invention in a way that makes it patentable (in these cases It is important to conduct a new search).

Beyond these benefits, a good patentability search report can help in the development stage (thanks to the technological review it provides) and in some cases even give an initial freedom to operate picture (old and expired patents will indicate a high chance of freedom to operate, while enforced patent my indicate on potential legal inhibitions that must be dealt with in the future)

Summary and conclusion

The first step after coming up with an invention is a serious and thorough self-search, however even if the search in the free databases did not yield identical publications, a professional search is irreplaceable. Such a search will:

Dramatically reduce the risk of filing a premature patent application that will be rejected (wasting a lot of money and critical time) and risk future attempts of getting patents rights.
Assist in drafting a mature patent application and in the future develop the idea into production and bring it to market.
Increases the chance of getting a patent right that provides the best and most extensive protection for the invention.

הפוסט The differences between self-patent search and a professional patentability search הופיע ראשון בPatentest

“The Paris convention”, PCT & US provisional – Different mechanisms to file a patent – explained

nishnish — Thu, 19 May 2022 11:23:07 +0000

When an inventor/ entrepreneur wants to get patent rights, one of the most important decisions he must take is in which countries he wishes to get a patent, using which filing mechanism (remember that a patent protects you only in the country that it was issued in) In this article we will discuss the various mechanisms for filing a patent and detail the pros and cons of each one.

Before we start however, let’s go over some basic terms in the patent world.

Basic patent terms explained

Patent – A right granted to an inventor by a state, giving him the prerogative to prevent anyone from using the invention in any way (sell, produce, import etc,), inside the borders of the state, for a defined period (usually 20 years).

Priority Date – The first filing date of the patent in the first country in which it was filed. This is the date to which any question is addressed such as “which patent is registered first”.

Paris Convention – Short for “International Convention on Intellectual Property” (Signed March 20, 1883). The Convention deals with a variety of intellectual property protections – Patents, designs, trademarks etc. The Paris Convention stipulates that the date of filing a patent in one country will be recognized as a “priority date” (see above) in the other member states, provided that the application is filed within 12 months of the first filing.

Patent Cooperation Treaty (PCT) – Signed in 1970. In this agreement, member states have established a series of uniform procedures for filing patent applications through a uniform application mechanism (“PCT application”).

Basic mechanisms for filing a patent

Before we go into a detailed explanation it is important to remember, that despite all international conventions and unification attempts, patent laws and regulations still vary from state to state. Therefore, before filing in any country, one should consult with a patent attorney/ agent who specializes in intellectual property law in the relevant state

1. Filing a single application in a single country

The application is filed (paying local filing fees). The examination process takes between several months and several years. If the patent is rejected, the inventor can appeal. At the end of the process, if the patent is approved, the applicant must continue to pay maintenance/ renewal fees for 20 years.

Benefits
This is the cheapest way and usually costs several thousands of pounds (search, drafting, filing, maintenance fees etc.).

Speed and simplicity – Filing in only one country, according to its own laws and regulations, having to go through a single examination process.

Disadvantages
Limited and narrow protection – The invention is protected in only one country. Elsewhere in the world, any person or company may freely manufacture, sell and market the invention. Although there are huge economies in the world that can constitute a significant market (USA, China, Japan, the UK etc.) in today’s global market, protection in a single country can be very problematic.

Limited patent value – Many inventors wish to get patent rights to be able to directly monetize the invention (i.e., sell it). A single national patent usually has limited value.

2. Filing in several countries under the Paris Convention (see above)

In this way, the inventor files an application in one of the member states of the Paris Convention (in accordance with its laws and rules) and over the next 12 months files patent applications in other member countries (complying with local laws and filing rules).

According to the Paris Convention, the patent’s priority date is considered the date of the first filing. For example – if a British inventor first filed in the UK in January 2022, then filed an application on the same invention in the U.S. in January 2023 the priority date of the US patent will be January, 2022.

Benefits
A strong international protection – The inventor gets patent rights protection in each country he filed in.

High commercial & economic value – Whether the inventor is interested in producing a patent-based product or intends to sell the patent, obtaining patents in a large number of countries increases the commercial value of the invention and the patent itself.

Disadvantages
High price – Each submission in each country may increase the price by thousands of pounds, sometimes more (translation costs, hiring local patent attorneys, local fees, litigation with each authority separately during the examination process, etc.).

Narrow timeline – From the moment of the first application, the inventor has 12 months to formulate, draft and submit applications in other countries.

Complexity – As stated, each country has its own laws & regulations. Adapting the application to each one (sometimes having to translate it), and separately examining/ appealing in each one, can not only be costly but be very complex and time consuming.

3. Patent Cooperation Treaty (PCT)

Another option is to file using the PCT mechanism comprising of the following steps:

The inventor submits one first application to a local or regional patent office (for example the UK’s Intellectual Property Office, USPTO, the European Patent Office – EPO or the United Nations Intellectual Property Organization – WIPO) and pays a single set of fees.
Get an international examination of the application in the authority in which it was filed.
The national stage – After thirty month, the applicant chooses in which member countries he is interested in obtaining a patent, and files a separate application in each country and state (according to each country’s laws, paying local fees etc.).

Benefits
Simplicity, speed and relatively lower initial price – The inventor initially files only one application, pays one set of fees and gets a preliminary examination.

Examination – The results of the international examination gives the patent owner insights that allows him to refine and focus the invention at the critical stage – the national stage.

Time – The inventor has 30 months to develop, build, improve and raise resources for the benefit of promoting the patent itself and / or build a startup/ business.

Strong international protection and high commercial economic value – At the end of the process a patent is obtained in several countries.

Disadvantages
A complex and expensive national stage – as stated above it is ultimately necessary to file the patent in each and every country, to pay the local fees and go through the examination processes in each and every one.

4. Provisional Application (US Provisional)

In the US there is a type of application (hereinafter provisional) containing only a general description of the invention that is not examined or published. 12 months after filing a provisional the inventor must file a “regular” detailed application according to all rules, however the priority date will be considered to be the date when the provisional was filed.

Benefits
Price and simplicity – The inventor can file immediately, paying a very low fee.

Time – The inventor has 12 months to develop and gather resources without the invention being exposed to potential competitors.

Disadvantages
The invention is not examined and at the end of the 12 months a standard application must be submitted with all the complexity and costs mentioned above.

Summary and conclusion

In order to patent an idea, the inventor must go through a long and expensive process with many legal and technical complexities. A professional patentability search costs only a fraction of the whole process and maximizes your chance of getting a strong patent right protection, in the smoothest way possible.

הפוסט “The Paris convention”, PCT & US provisional – Different mechanisms to file a patent – explained הופיע ראשון בPatentest

I have an innovative idea, what’s the next step?

Zack Amir — Wed, 09 Mar 2022 07:15:27 +0000

If you ask yourself the following question: I have an innovative idea, but what should I do right now? Then this article is for you. As a patent search company, we get that question a lot. Regardless if you are a private inventor trying to cash in on it or an entrepreneur planning to build a business, getting a patent is essential.

An enforced patent in several big markets will provide you with:

An actual asset that can be sold or licensed in exchange for cash or royalties
Protect you from theft and copying by others.
Dramatically increases your product/ company’s value.

So let’s talk about how you patent an innovative idea.

How to patent an innovative idea in three main stages

First stage: Answering basic questions via self and professional patent search

Do your homework! It is important to remember the patent laws in most countries (US, UK, Europe, China etc) stipulate two main conditions that an invention must meet in order to be patentable – A complete universal novelty and non obviousness (also referred to as an inventive step).

Before going drafting and filing a patent application you must answer basic questions via self and professional search:

I have an innovative idea, but in what way is it different from existing tech? (What are the problems the invention solves and how, key features, advantages over existing solutions etc).
Does my invention already exist?
Is my business idea good?
Who and where are my customers and markets?
What is my end business goal (filing and getting a patent and then selling or licensing it? or start a company)

A patentability search is necessary not only to answer the question: “Does my invention exist”, but also to find publications that are close to the invention in such a way that might endanger the chance of patentability (i.e patents or other publications that show your invention might not have an inventive step).

Since patents are written in a very legally/technically professional language, it is important to conduct a patentability search which is done by a patent searcher who is skilled in using paid databases and is trained both in the relevant technological fields and the patent legal field.

Conducting a patentability search will save you money

A patentability search costs only a tiny fraction from the total process of getting a patent and maintaining it in several major countries (Patents are county based – you must get a patent in each country you need protection). Getting a granted patent in a single country and maintaining it for 20 years can cost between several thousand to several tens of thousands of pounds. In our global market you need to protect yourself in several major states, therefore a multinational patent protection will cost a few tens of thousand pounds.

If you are an entrepreneur building a startup or a manager of a company planning to develop a new product (and not just getting a patent for selling it), a patentability search can help you to decide whether you need further patent searches:

Freedom to operate search – in order to find any enforced patents on the whole or part of your invention that might prohibit you from manufacturing and marketing the product.
State of the art search – Giving you a commercial and technological survey of the invention field and competitions.
Patent Landscape Report (PLR) – Mapping of your invention’s field, from technological and business IP aspects (major competitors, technological trends, common solutions, etc.

Second stage: Analyze the patent search report with an IP consultant/patent agent/attorney and decide how to continue.

After getting all the information it is highly recommended to reach an IP specialist such as a patent

agent/attorney, go over the finding and decide if and how to continue. The analysis can end in several major outcomes:

There are no publications that stop you from getting a patent – continue to the next stage.
There are no identical publications denying you from getting a patent, however there are enforced patents on features of your invention – make sure you conduct a freedom to operate search (see above) now or in the future.
Identical or very similar publications were found (patents, products, articles etc) which show you don’t have an inventive step (it’s not an innovative idea).

If the third option occurs you must go back to the drawing board and decide whether to:

Abandon the attempt to patent the idea, conduct a freedom to operate search and if there are no limiting patents develop and market your idea. Remember – most products are not patent protected and most patents don’t become products!
Go back to the drawing board – Try to improve or fine tune your idea in a way creating an edge over existing published solutions i.e giving it an inventive step. Then conduct a second patentability search focused on the change and make sure it is new, thus making your invention patentable.

Third stage: Choose the Most Suitable IP path, draft and file

Now you should choose the most suitable patent filing mechanism such as

Filing a single national application (giving you 12 months to file in other countries)
Filing in multiple countries simultaneously.
Filing a PCT application (giving you 30 months until you must file in the relevant countries)
Filing an US provisional (granting you 12 months to start a regular filing process of a full patent)

The decision should include not only legal parameters but also commercial and economical ones (what are the end goals, where are the relevant markets, what are your financial resources etc.)

In accordance with the filing mechanism you chose, your patent attorney/agent will draft and file a patent application. You must pay the relevant fees and the process of examination will start.

What happens next?

The search process takes several months at the patent office where you file. The majority of patent applications get some sort of first rejection and the applicant must argue and try to convince the patent examiner why it’s an innovative idea.

Then the examination process can take years and be very costly, hence the importance of a high quality patentability search. Such a search will give a map of relevant prior publications, allowing you to be fully prepared for the examination process.

At the end of the process you will either get a final rejection or a final grant (in many countries, such as the US for example, the rate of granted application is around 50%).

If the patent application is approved and a patent is granted, you must now pay annuity fees every year for the patents 20 years of life.

הפוסט I have an innovative idea, what’s the next step? הופיע ראשון בPatentest

What to do with a new product idea – 5 effective strategies

Zack Amir — Mon, 28 Feb 2022 12:10:33 +0000

What to do with a new product idea – 5 effective strategies

Do you have an innovation idea up your sleeve, but are not sure about how to protect it? In this Article we will discuss 5 strategies that will help you understand what to do with a new product idea in order to get a patent.

Tip 1: Time is of the essence:

First step of knowing what to do with a new product idea is to understand the patent filing timetable (in the UK and internationally)

Patent is a right which is granted by a government in its own territory. A patent granted in the UK will give its owner sole proprietorship only within the UK borders.

Remember – In order to truly protect your invention, it is important to get a patent in all the countries you are indenting to operate in! When you file in the UK the clock starts ticking and you have only 12 months to file in other countries or lose all rights to file abroad (allowing all competitors outside the UK to freely copy you)

It is also important to do all the proper work before filing (patentability search, market search to decide where to file etc.) and have an international filing strategy (PCT , national filings, EP filing etc.)

Tip 2: Know how costly and how long it takes to patent an invention

Prepare for paying all the filing, appealing and annuity fees.

During and after filing you will be required to pay all sorts of fees (not including the drafting costs). However, this does not end when the patent is finally granted.

Remember – A patent is enforced for 20 years (in the UK as in most other countries). The patent is valid as long as the owner keeps paying yearly/ periodically fees. Any lapses in these payments might make the patent non-enforced!

It is also important to know that most patent applications get rejected. Most applications that are finally granted, become so after a long appealing process that can take up to several years and usually requires more payments to the patent office and your patent attorney.

Tip 3: Understand what makes an invention patentable

Conduct a patentability search to know whether your invention exists

The UK’s patent laws (as most patent laws in the world) stipulates that a patentable invention must be new –

“… (1) An invention shall be taken to be new if it does not form part of the state of the art.

(2) The state of the art in the case of an invention shall be taken to comprise all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way….”

I.e if there is any public disclosure (in or outside the UK) prior to filing, the application will not be approved.

Another stipulation is an inventive step:

“…An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art…”

I.e. your invention can rely on previous technologies but it must also contain a fundamental new feature not obvious to experts in the invention’s field

Remember – The patent examiner will conduct a thorough search using non-free tools/ databases (patents, applications, products, articles, books etc.). If he finds any kind of publication describing the whole invention, major parts of it (identical or similar) he will conclude your invention is not new and/ or not lacking “an inventive step” and will not grant a patent!

It is important to conduct a patentability search that imitates the patent examination process – A search done by experts using similar tools and methods as the patent examiner. Such a search (that is by far the cheapest stage in the process) will help you find any relevant prior art beforehand, allowing you to optimize your patent application claims (see below) thus improving the chances of getting a patent.

Tip 4: Do your homework:

What to do with a new idea product next is to be sure your invention is applicable, and the application is complete

You can get a patent on an idea, i.e an invention which is still in the concept stage (you don’t have to build a physical working product/ tech) however there are 2 stipulations:

You must supply the Intellectual property office a comprehensive, detailed description of the invention (including background, explanation, drawing etc.) as the UK patent law describe:

“…The specification of an application shall disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art…”

I.e the invention must be explained in a way that will allow a skilled professional to build the invention according to the patent application. The most important part in the application are the claims – a description of the element having an “inventive step” on which the patent will protect.

According to the UK patent law invention is patentable as long as

“…it is capable of industrial application;…”

I.e it is either completely or partly technological/ tangible. According to this you can’t get a patent on:

“…anything which consists of – (a) a discovery, scientific theory or mathematical method; (b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever; (c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer; (d) the presentation of information;…”

Remember: A patent only protects the invention as described in the claims. To build a product based on that invention you might need to use known free or patent protected techs.

If you intend to build and market the invention It is important to first conduct a freedom to operate search in order to avoid infringing existing patents and be exposed to lawsuits.

Tip 5: Use patent professionals

Getting a patent takes a lot of technological and legal know how and experience

There is no law enforcing you to conduct the patentability process by yourself (search, draft, file appeal etc.) however it is highly advisable (by most experts and patent offices around the world) to use professionals such as patent searchers, patent attorneys and patent agents.

Remember – If you rely only on self-search using free patent databases you risk missing publications that can get your application rejected – wasting a lot of time and money.

It is also important to be familiar with filing/drafting procedures/requirements in each country you intend to file in. Even the slightest technical error can get your application irreversibly rejected ruining any chance of getting a proper patent protection in the future

Now you know what to do with a new product idea and how to patent an idea in the UK.

Good luck!

הפוסט What to do with a new product idea – 5 effective strategies הופיע ראשון בPatentest

Is my business idea good?

Zack Amir — Fri, 28 Jan 2022 16:25:58 +0000

Is my business idea good? Here is how you find out

Whether you are an inventor, entrepreneur or a manager of an established business, while coming up with an invention (a new service, product or technology), there are a lot of commercial, technological & legal questions that come into mind and must be answered: What to do with a new product idea? how to bring a new product idea to market? Does my invention exist? How to patent an idea? etc.

But there is one question that needs to be answered before you start spending time and money: Is my business idea good? In this article we will discuss tools and techniques to answer this question.

Is my business idea good? Part 1: Basic questions that can help you establish your idea strength and weaknesses

You must first define your business idea /product/ technology by answering the following questions:

What are the problems that your invention solves?
How does your product solve those problems?
What are the key features of your new product?
Are there already products solving the same problem? If there are, in what way does your invention differ from them and why is it better?

Business and commercial question such as:

Who are your customers?
Where are your markets?
Who are your competitors?
What is your business end goal (develop a business or to just get a patent and sell it)

Last but not least are the legal questions:

What makes an invention patentable? Is my invention patentable?
Does my invention already exist?
Are there enforced patents that can prohibit me from freely manufacturing and marketing my product?
How to patent an idea?
What are the costs of getting a patent right?

Answering the first and second sets of questions can be done using tools like business and marketing research. Answering the third set of questions involves contact with a patent professional and using tools from the intellectual property (IP) informatics sphere.

What makes an invention patentable?

First you must remember a few important basics about patents:

Patent rights are territorial – To optimally patent an idea you must file and get a patent in each country you are interested in.
Patent right lasts for 20 year – you must pay maintenance fees during that period (in each country you got a patent)
In order to get a patent on an idea it must have:
- Novelty – there must not be any kind of publication, anywhere in the world that dicloses the invention.
- Inventive step – The invention must be Non-obvious to people skilld in the trade.
- Applicability and utility – In many important jurestections (US, UK, EU and others) you can not get a patent on a method for doing business by itself, only when combined with some technological system.

Conducting a patentability search

One way to answer the question “is my business idea good?”, is using the global patent and technology databases to find out if part or all your business idea is patentable(i.e – “does my invention exist?” – and does it have an inventive step over known products/ technologies/ patents). To do so you must conduct a patentability search.

In order to discover if there are enforced patents (in the relevant countries) that may prohibit the manufacture and use of the whole or part of your product, a freedom to operate search is needed.

Self research

First it is recommend to do a self research via free and open search tools such as:

Google search & Google scholar for products and articles (remember – the invention must be completely new – any publication of it in any form anywhere might prohibit you from getting a patent)
Google patents
Espacenet – The database of the European patent office (EPO)
Patentscope – The database of the world intellectual property organization (WIPO)
National patent offices such as the american patent and trademarks office (USPTO)

A self search using these tools will help you get a basic picture of the prior art, i.e – what are the existing solutions to problems your invention solves, existing products and technologies in your invention field, who are your competitors etc.

Professional patent search

Secondly, it is recommended to contact a patent search company and to conduct one or few of the following searches

A patentability search, in case you didn’t find any prior art that resembling your idea (patent, product, article etc.)
Freedom to operate search – if you encountered enforced patents protecting the whole or part of your invention and still want to go ahead and manufacture/ import/ sell the product.
Other types of patent searches like state of the art & Patent Landscape Report (PLR) – in cases you want to get a wide picture of your invention/ product field, from comercial, business, technological and IP aspects (what are the existing solutions/ technologies, what/ who/ where is my competition, what is the IP trends in the field etc.)

Patent search companies will be able to guide you to the most suitable search you need according to your end goal and self research results. After that they will use experienced, specially trained patent searcher who use non-free, paid databases/search tools such as-

Orbit questel
Patbase
DWPI – Derwent World Patents Index
TotalPatent
STN
Dialog
WIPS

It is important to note that beyond the knowledge and expertise of a professional patent searcher, these paid databases/ search tools have a lot of data that one can not find in the free, open databases/ search tools. Furthermore they give the searcher unique and powerful search functions far exceeding those of any free database/ search tool.

Do not be too eager

One of the most common mistakes done by inventors and entrepreneurs is to rush to file a patent application (paying a lot of money) based on a self search just to get a rejection based on an old forigen patent from a patent examiner. A document that would be easily found ina professional paid database , or worse –

Spending time and money on patenting an idea and on development, manufacture and marketing just to get a letter telling you that there is an enforced patent on the whole or part of the product that prohibits you from using it.

Is my business idea good? part 2: Conclusions

After conducting the above searches the knowledge you gather will help you answer the question “is my business idea good?” from every aspect:

Commercially – customers, markets, costs etc.
Technologically – existing technologies.
Legally – the chance of getting a patent, freedom to operate etc.

Good luck!

הפוסט Is my business idea good? הופיע ראשון בPatentest