What to know before filing a patent

26th October, 2017

Filing a patent is an important step in making sure you get full value from your intellectual property, but going into the process blind risks undermining that value.

For many small businesses and startups, the key motivation for filing a patent is to obtain the exclusive right to market a product covered by the patented invention.

For small businesses especially, this exclusive right may be all that deters competitors from replicating the business’ products.

So what should a prospective patentee know prior to filing a patent to maximise the value of their patent?

READ: 5 IP shortcuts for small businesses

Know your invention

A common dilemma faced by many inventors is whether further product development is needed before patenting, or whether it’s more crucial to get a patent filed before someone else does.

What you end up patenting may not be reflective of the final invention, but at the same time if you leave it too long somebody may beat you to the punch.

What aspects do you consider ‘essential’ and don’t want competitors copying? In many cases, it’s worthwhile to create a prototype of a product containing your invention to help iron out any kinks.

Knowing this information prior to drafting the patent specification will put you in a good position for ensuring all the essential product variations are included in the patent draft.

But what if I’m working on a few variations of the product and I’m not sure which one is going to be the one?

If the variations differ, but still have a common novel aspect, they may be included in the same patent.

If however, they differ further, it may be necessary to split the inventions across two or more related patents.

Fortunately, these matters may be dealt with after the patent has been filed, so long as you’ve made sure all these variations have been fully described in the initial patent specification.

READ: Do you have (IP) protection?

Know what else is out there

As part of their efforts to address a market gap, inventors may have already done a quick search to see what’s out there.

But there can be a big difference between what is currently missing from the market, and what is actually patentable.

In order for an invention to be patentable it must be novel; that is, never before disclosed to the public by another party anywhere in the world.

There are more things publicly disclosed than there are currently on the market, so a quick internet search may not be sufficient.

Just looking through a patents database may not be sufficient either, as technical improvements can be published through journals, news articles and even brought to market without being patented.

A novelty search, performed by a patent professional, will include a patent search, an internet search and a search of accessible publications. This will provide you with increased confidence that your invention has not already been published.

And as an extra benefit, a professional search will also provide you with knowledge of what similar inventions are out there.

This gives you an opportunity to improve upon your invention or to further differentiate your idea.

If you don’t have the information before you seek to file a patent, you may be forced to make hasty and undesirable changes to your claims to get them past the examiner.

Know how to sidestep your invention

In a dynamic marketplace, competitors will seek to replicate a successful product.

To protect your investment, it’s worth considering how your patent will prevent others from replicating your product.

Can the invention you intend to patent be side-stepped through a tweak to the product’s design that does not significantly affect its functionality?

When working with your patent professional to draft your specification, apply your industry expertise to consider how you would work around your claimed invention if you were a competitor.

This is all about defence.


Taking the time to consider the above points before filing the patent will hopefully result in an examination process which is more predictable and a set of patent claims that are of high value to you.