Time waits for none, so does a chance to be a millionaire.

Deciding on the perfect time to file a patent applications for any start-up has always been a difficult decision in any domain, but it is particularly difficult in competitive and rapidly developing countries like India. The start-ups must make a fairly smart decision whether to delay filing until a substantial amount of data have been accumulated to support the invention and risk being 'scooped' by a competitor, or alternatively file early to secure a filing date ahead of the competition and risk the patent application being rejected as lacking adequate experimental support. Choosing the right time to file is particularly difficult in countries like India and any developing economy where there are a lack of resources to get you connected to a right brains.

Start-ups try to either neglect to file patents or circumvent this problem by filing early on the basis of limited experimental data to establish a filing date ahead of potential competitors, on the understanding that it may be possible to submit further experimental data at a later date to show that the invention did in fact meet all the requirements for patentability as of the filing date.

This article summarizes the effects of the decisions of start-ups towards filing a patent, and identifies the circumstances in which they should not be neglecting to file may be not an early patent but a right and early one.

Sufficient disclosure requirement

Inventions must satisfy the basic patentability requirements common to all technical fields: that is, the invention must be novel and non-obvious in comparison to the prior art. The invention must also be supported by sufficient technical disclosure to enable one skilled in the art to practice the invention over the full scope claimed without undue burden.

Novelty and non-obviousness validates your patent

An invention is patentable only if it is:

• New and previously undisclosed.
• Distinguished by an inventive step not obvious to someone expert in that technology.
• Capable of industrial application - that is, it is physically possible to make the invention.

Some issues to consider before deciding to patent

• Do you really need a patent? Would some combination of other forms of IPR protect your idea adequately? And be honest with yourself - are you perhaps motivated more by vanity (the prospect of a patent in your name) than by commercial necessity?
• Have you studied the total cost of patenting ? Is your invention likely to earn enough income to justify the cost? Normally, you should not apply for a patent until you have thoroughly researched the commercial and financial potential of your idea.
• Is the time right to apply for a patent? Application starts a sequence of events which cannot be delayed. Do you apply for a patent early on, or wait until the invention is market-ready and more capable of quickly recouping its IPR costs? Later may be better than sooner, but circumstances will vary so you should always seek the advice of a right patent attorney.
• Does your invention have a short product life cycle? The patenting process typically takes 3-4 years. If your invention is aimed at a highly competitive market in which products are rapidly replaced or improved, your patent may be worth little by the time it is granted but definitely will add value if you are planning to sell your invention soon.
• Who will pay to enforce your patent? National IP offices do not enforce patents or monitor them for infringement. These are the responsibilities of the patent owner or a licensee. Until funds are potentially available to enforce your patent - from royalties or sales income - it may offer limited practical protection.
• How strongly might your patent resist legal challenge? You will definitely need a patent attorney's advice on the strength of your claims. This is important because the validity of patent claims is often challenged, usually by competitors who want to copy a successful product. If they succeed, you may be left with a valueless patent & an order to pay the victor's legal costs.

Applying for a patent

Applying for a patent is a legal process governed by strict timescales and usually immovable deadlines. It is not something to rush into! To maximize your chances of a worthwhile patent you should:

• Study the application procedure in detail.
• Aim to apply not in haste, but strategically - at a time and for a reason that most benefits your exploitation plans.
• Consult a patent attorney! Do not do it all yourself - the risk of making mistakes is too great.

Stage 1  Beginning the process

Your patent attorney must provide documentation consisting of:

• A request for a patent.
• Details of the applicant (you).
• A description of the invention.
• Claims.
• Drawings (if any).
• An abstract.

A fee must also be paid. In order to avoid delay, it is vital that all documentation conforms in every detail to official requirements. Your patent attorney will ensure that it does.

For your patent attorney to prepare all the information about your invention, he or she will obviously need to work closely with you. Do not assume that you know best because it is your invention. You must trust the skill and judgment of your patent attorney, as patenting involves a complex mix of law and technology. The claims in particular need to be drafted with skill, as they are the most important aspect of a patent.

Stage 2  Filing date and initial examination

If your documentation appears correct, your application is given a filing date - also known as your priority date. After filing there is a formalities examination to ensure that your documentation is correct and complete.

At any time in the next 12 months you can file for patent protection in other countries and have those later filings treated as if they had been filed on your priority date. In practice, this gives you a year to decide how many countries you wish to include in your patent protection.

Stage 3  Search

A search report is sent to you, listing and including copies of all prior art documents found by an experienced examiner and regarded as relevant to your invention. The search is based mainly on your claims for novelty, but your description and any drawings will also be taken into account. The report will often include an initial opinion on the patentability of your invention.

Stage 4  Publication

Your application is published 18 months after the filing date. Your invention will appear in databases accessible to other people around the world. It will act as prior art against any future patent applications from other inventors or companies for similar inventions.

You then have six further months to make two decisions:

• Do you want to continue with your application? You indicate ‘yes' by requesting a more thorough (‘substantive') examination.
• Which countries do you want to include (‘designate') in your patent protection? Designation fees must be paid.

After your patent is granted, you may claim damages for infringements originating as far back as the publication date of your application. However, to enjoy this right in some countries it may be necessary to file a translation of your claims with their national IP office and for them to publish the translated claims.

Stage 5  Substantive examination

If you request substantive examination, the Patent office has to decide whether your invention and your application meet the requirements of the Countries patent laws. This stage will often involve dialogue between the examiners and your patent attorney, which may result in the re-drafting of key parts of your application. Your patent attorney will defend your application, and this is one more reason why it is essential to have professional representation.

Stage 6  Decision to grant a patent

If the examiners decide to grant a patent, and all fees have been paid and any claims translations filed, the decision is reported in the Countries Patent Bulletin. The decision to grant takes effect on the date of publication.

Stage 7  Validation

What you have now got is a ‘bundle' of individual national patents. After the Patent office decision to grant is published, your patent has to be validated in each designated country within a specific time limit. If this is not done, your patent may not be enforceable in that country. In some countries, validation may include having to file (and pay for) a translation of the whole patent, or just a translation of the granted claims.

Stage 8  Opposition

A granted patent may be opposed by third parties - usually the applicant's competitors - if they believe it should not have been granted. After the grant is reported in the public platforms they have nine months in which to file notice of opposition. The most common charge is that the invention is not novel or lacks an inventive step. The case will be examined by an patent examiners team.

Opposition is the last chance to attack a patent as a single entity in a single forum. Later, the patent can only be challenged in national courts and a ruling in one country has no effect on the patents for the same invention in other countries. This gives competitors a strong incentive to challenge an invention during the opposition period, as challenging patents in separate national courts can be much more expensive.

Stage 9  Appeal

All patent decisions are open to appeal. Responsibility for decisions on appeals is taken by independent boards of appeal.