Patent filing - Demystified

So you’ve been working hard on building an innovative solution. Filing a patent has always been at the back of your mind but you never got a chance to spend some quality time on it. Finally you launch your solution, take a breather, and pick up the threads on filing the patent only to realise that it might be too late to do so.

Most of us already realise the importance of protecting our intellectual property. Patent infringement battles are tedious and some of the largest patent damages have run into more than a couple of billion dollars each. On the other hand filing a patent brings about its own value in terms of exclusive rights, edge over competition, personal and brand recognition, aid in raising investment, and potential revenues from licensing.?

A common perception is that the whole process is long and expensive. This may or may not be true depending on how much effort is put in by the inventor themselves and finding the right? guidance in the whole process. In fact the whole process may be accomplished by the inventor on their own at a minimal cost by paying only a very low statutory fee since there is a lot of helpful information already available in the public domain on the whole process. There are other ways too to optimise the costs and we will discuss them in due course.

The main questions that the inventor may have are what to patent, when to patent, where to patent, and how to navigate the complete patent filing process while keeping an eye on the costs. Having filed more than 20 patents and helped many of our portfolio companies through the filing process, I feel that it’s important to discuss certain things to keep in mind while filing your patent. Let’s discuss these in this multi-part series.

The first step is to figure out whether the solution (or idea) is patentable. There are two main points to consider while evaluating your idea - novelty and inventive step. There is, in fact, a third point related to usability as well but we are assuming that if you are considering patenting an idea, you also foresee potential users (maybe including yourself) of that idea.

• Novelty - This means that the idea should not have been published, disclosed, or publicly available before the date of filing. Technically this automatically excludes your idea from patenting if it has been launched for the general public or published in some literature although different jurisdictions may have slightly different rules. For example some jurisdictions allow a grace period between public disclosure and filing.
• Inventive step - This means that idea should not just be a combination of already known features or steps. In other words it should be non-obvious for a “person having ordinary skill in the art”. If a set of steps or process is already established, then it may not qualify to be patentable. At the same time if there is a change to those established and well known steps, then there could be a possibility of considering that as an inventive step.

The check for novelty can be done by looking up your idea on the internet. This is also known as “prior art search” and can be done by shortlisting the relevant keywords for your idea and looking them up on several freely available patent databases (USPTO, EPO, Google Patents). The results may or may not match exactly but would give you a fair idea whether a similar idea has been patented in the past.

Even if a match is found at this stage, it does not mean that the idea should be given up altogether. Rather it could be an opportunity to refine and enhance the idea so that novelty can be brought out clearly.

The check for inventive steps is relatively more difficult and requires analyzing the idea in detail and figuring out whether it would be considered non-obvious at the date of filing. This could apply to either the entire product or the steps or the process used. The best way is to list down the entire details and then tick or cross the parts that are already well known or could be considered as obvious. This will also help in drafting the claims section which we will discuss later.

Once the novelty, inventive step, and usability are figured out, it’s time to plan when to file the patent and how to go about the whole process. Generally It’s never too early to do so, but still it’s better to keep certain things in mind. We will discuss these important aspects in the next part of this series. Till then, please do feel free to share your thoughts and experiences on the patent process.