Patenting your Invention – The Quick Guide

24.03.2019
Asaf Shalev, Founding Partner at Shalev, Jencmen (SJ) & Co.
If you’ve invented something new, that has business value, you've probably heard people telling you that “you must protect your invention”. In many cases, they mean that you should apply for a patent, which is a specific type of protection for an invention. In this article, we will provide you with some information about the patenting process, which includes actions to be taken before filing a patent application, and what to expect after filing a patent application.

Before discussing the process, let’s first understand what a patent is. A patent is a powerful business tool that provides its owner with a time-limited ability (usually 20 years) to prevent others from performing various acts (such as using, selling, making, or importing) with the protected invention. The motivation of governments to grant a patent is to enrich the public knowledge, as patent applications are published (usually 18 months after they are filed, with some exceptions). The underlying concept is that knowledge is based on knowledge, so encouraging inventors to disclose their inventions will advance humanity by enabling more innovation inspired by, or built on top of, the disclosed inventions.

It’s important to note that a patent creates a negative right; to prevent others from making certain use of your invention. It is not, however, a license to use your own invention. You may have a patent for something that requires using other patented technologies for it to operate. In such case, you may theoretically find yourself unable to use your invention, as using it may infringe other patents.

So how do you start?

 1.      Identify YOUR differentiators – At the end of the day, a patent will only be granted for new and non-obvious inventions. Therefore, the first stage requires you to identify those aspects of your invention that differentiate it from existing solutions. When doing so, remember that in many cases god is in the details: Don’t dismiss small features that may seem trivial, as long as they are not obvious. Remember – patents are not only for “rocket science” and those small features may end up being the ones that have the highest business value.

2.      Find the Business Value – Evaluate the features that differentiate your invention from prior art (noting that prior art is any source of knowledge available to the public, including previously published patent applications, scientific articles, products available for sale, etc.). Assuming that you get patent protection for those features, and noting that a patent creates a negative right (as explained above) – does it provide you with business value? If a feature is on a critical path to a solution, even if it is a small feature, having the ability to prevent others from using it may be of great value. In some cases, even features that are not on the critical path, but those that you feel may end up being part of a customer’s decision to choose your product over competing products – will also provide priceless protection. As an example, think about Steve Jobs and Apple. Assume that five years ago someone would have asked Steve what he considers to be the most valuable patents in Apple’s portfolio (which includes tens of thousands of patents). I bet he wouldn’t have pointed out “slide to unlock”, “pinch to zoom” or “bounce back”, over those patents that deal with complex 4G technologies for example. Those three patents got Apple jury verdicts that add up to more than 1 billion USD in damages.

3.      Search – Assuming you’ve identified differentiators, and that you evaluate them as having business value, it is advisable to conduct a prior art search, to make sure that your invention is indeed novel, and non-obvious in comparison to the prior art. You can conduct the search on your own using free databases, such as “Google Patents” (where you can simply type in suitable keywords that are related to your invention). You may consider using a professional to conduct the prior art search. It is advisable to discuss the results of the prior art search with a patent attorney to estimate the likelihood of obtaining a patent in light of the prior art.

4.      Draft – Upon determining that you have an invention that is new, non-obvious, and has business value, a patent application needs to be drafted. Optimally, at this stage you should hook-up with a patent attorney who has the required technical background to understand your invention and take control over the drafting process, which requires extensive expertise. If you cannot afford the service fees of a patent attorney and you decide to try drafting a patent application on your own – it is recommended that you at least get some guidance from a professional patent attorney. It should be noted that in many cases, filing a poorly drafted patent application may be worse than not filing at all, as it has an effect on the entire downstream process, that traces back to this first filed patent application.
 
5.      File – The patent application now has to be filed in order to secure a “priority date”. The priority date is the filing date of the drafted patent application, and it marks the prior art borderline. In essence, any document that is published from that date onwards (with some exceptions) cannot be used to claim that your invention lacks novelty or that it is obvious in light thereof.  In general, a patent is only valid in the territory in which it is granted. Therefore, theoretically, you should file a patent application in each territory in which you seek protection. However, filing in multiple territories is very costly and complicated. Therefore, two international treaties have been signed to make the process smarter and easier also for pre-seed companies, making the question of where to file a bit more complicated:

The Paris Convention for Protection of Industrial Property (or, in short, “the Paris Convention”): What the Paris Convention provides is a framework in which you can start by filing a single patent application, in any territory that you choose (as long as it is a member of the Paris Convention), and during the first year after its filing, you can file the patent application in other territories claiming its priority date (so that such additional patent applications will be considered as if they were filed on the date of the filing of the first filed patent application). The cheapest option in terms of official fees is a US Provisional patent application, on which we will not elaborate in this article.

The Patent Cooperation Treaty (or, in short, “PCT”): After some time, it became apparent that one year is not always enough to raise funds and identify target markets in which patent protection is to be sought. Therefore, the PCT was signed. The PCT provides another framework in which you can file a single “international” patent application, and anytime during a 30-month period from its priority date (that can be the date of filing of the PCT if it is the first filing, or the date of filing of another patent application from which the PCT claims priority via the Paris Convention) – national patent applications can be filed, claiming its priority date.

It is recommended to consult a patent attorney on the filing strategy, which depends on various factors. Let’s discuss two exemplary scenarios. One is a pre-seed startup, and the other is a company that already has a large patent portfolio. 

In the first case, money is a major concern. It is a concern on two fronts: paying for the process and having a patent application to increase the chances of raising funds. Accordingly, most startups want to keep the costs as low as possible and postpone examination of the patent application at least until they raise funds (as having their patent application rejected by an Examiner may mean that they will not be able to raise funds). Many startups thus choose to first file a provisional patent application, and then, a year later, file a PCT application. By the time the deadline to enter national phases arrives (30 months from filing the provisional) – the startup usually raises funds (or otherwise – abandons the patent application).

For a company that has a large patent portfolio, the considerations are different. These types of companies want to make sure that the likelihood of getting a patent for any invention is high, so that they can invest their money wisely in strong patents. There are routes that provide quick examination of patent applications, in which the examination of the patent application starts within a few months from filing. One example is accelerated examination in Israel. Having the application examined quickly enables the decision makers to decide whether to continue pursuing it in various territories based on the results of such examination. 

At the end of the day, your intellectual property is probably your most valuable asset. We highly recommend meeting a patent attorney to get additional information that is relevant for you, and to make sure that your intellectual property is treated properly to prevent any loss of rights, and to generate value to your venture.

The content of this article does not constitute legal advice.

Asaf Shalev is a Founding Partner at Shalev, Jencmen (SJ) & Co., an international Intellectual Property firm, located in Israel and offering premier expertise in filing, prosecution, renewals, oppositions, due-diligence, portfolio management, strategic counseling and commercialization in all areas of intellectual property. The firm is led by seasoned advocates and patent attorneys, with strong technological background in the high-tech industry, in which the firm specializes. With a long and successful track record of prosecuting applications at the Israeli Patent Office and at other patent offices worldwide, for local and international customers, the firm aims to maximize the value of its clients' intellectual property assets by securing optimal protection.