Accelerate - June 2013

Three patenting pitfalls

With any business venture it is important to identify and protect your valuable IP and ensure that new ideas and innovations are secure from copycats and idea-hijackers.

Filing a patent application can sometimes be a prolonged and challenging exercise, but it is still the best way to ensure legally that your innovation stays yours.

Neville Queree, Intellectual Property Manager at Callaghan Innovation, shares the following three important tips to keep in mind when you have an invention or process that you want to patent:

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1. Do not disclose your invention prior to filing a patent application

The many opportunities to patent inventions are lost each year when the patent applicants publicise or commercialise the inventions before filing the patent applications. Publication can include a display in a public place, an article in a newspaper or a disclosure to an outsider not covered by a formal confidentiality agreement. Closely guard the confidentiality of your innovation until you have filed any patent application that forms part of your IP protection strategy.

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2. First thing to check: is your invention really novel?

It is necessary to demonstrate that your invention is novel before a patent can be granted. Potential patentees can be disappointed to learn that others, often in other countries, have patented or at least publicly disclosed their “inventions” beforehand. Start with a comprehensive patent database search as well as a technical literature search. A regular internet search using some applicable keywords that describe your invention is also a good place to start. It is important to do this before investing too much money in your idea and commencing the patent protection process.

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3. Who owns the IP?

Like other forms of property, such as real estate, IP can have one or more owners or proprietors. A business needs to take the appropriate steps to ensure that valuable IP developed by its employees in the course of their employment ends up owned by the employer. Good business practice includes having an employee employment agreement, or for contractors a contracting agreement, that covers the development and ownership of IP arising from their work and obliges them to assign their IP rights to the business. Other important considerations in an employment agreement include an obligation on the employee (or contractor) to keep new development details confidential (unless explicitly permitted to release them) and a requirement to keep good records for projects where new IP is likely to arise. These records will be invaluable when drafting up a patent specification.

Updated: 4 September 2015