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Patent Power

"I have nothing to declare except my genius," announced Oscar Wilde to presumably bewildered U.S. customs officials in 1882.

But Could He Patent His Genius Too?

Other articles in this series on patents will consider points such as different types of patents, trademarking, copying inventions, and more.

Although we like to think of ourselves as uniquely gifted in our chosen sphere, there are other creative and original thinkers out there. And from thinking comes formulating, and from formulating, inventing.

It is also worth remembering the warning cave canem (Latin for "beware of the dog") or even "Et tu, Brute," the cry of Julius Caesar's recognition of ultimate betrayal (his best mate stabbed him). The point being that you may have invented the pneumatic braking system but what if unscrupulous colleagues come across your sketches before you've protected your intellectual property?

Knowing — and establishing — our intellectual property rights is absolutely essential even at the earliest stage of the idea-to-product process. Intellectual property rights cover a wider range of legal rights, including patents, trademarks and registered designs.

Patents

Jeremy Ben-David, a native of London, and a qualified civil engineer, has been living in Israel since 1984. After 10 years in the field of patents, he set up Jeremy M. Ben-David & Co. Ltd., which, with a total staff of 23, is the largest Jerusalem-based patent and trademark practice. Jeremy M. Ben-David & Co. Ltd. specializes in patents, trademarks and technology/IP assessments, generally, with technological specialization in many fields, including software, telecommunications, mechanics, optics, and robotics, medical devices, chemistry, materials science, and biotechnology.

Patent attorney Jeremy Ben-David states that "a patent can essentially be considered as providing to its owner, which may be an individual or a corporate entity, a negative or aggressive right, regulated by law in a specific legal jurisdiction, by which the owner of a patent can take legal action against a third party who copies an invention protected by a patent, without the permission of the owner." In lay terms — if anyone copies your patent-protected inspiration, you can take them to court.

Patent holders come in all shapes and sizes, from "children with neat ideas, through entrepreneurs and start-ups, via mid-size corporations, to the largest multinational corporations." Accordingly, each of these "entities" file patent applications for a variety of reasons. These reasons range from prestige (probably the least-justifiable reason in economic terms) to sophisticated corporate strategy, and vary from patentee to patentee.

Big Business

Over 6,000,000 new patent applications are filed around the world each year, ringing up trillions of dollars spent on patenting. While each granted patent represents a potentially valuable asset for its owner, it is generally under-utilized. Sad to say, the patent's potential almost always exceeds its realized value.

But It's Worth It

Major uses of patents — bearing in mind that they are used to prevent others from copying proprietary inventions — are a means of leveraging lucrative licensing agreements. Patents are valuable bargaining chips in the corporate jungle.

However, this is often not the immediate concern of a young startup, or even of a seed-stage company that may not have either the financial assets or the corporate foresight to file patent applications with such gusto and sophistication.

First to File

Most patenting jurisdictions employ a "first to file" system, whereby patent rights belong to the "first to file" a patent application for a given invention. Take note that the United States has a "first to invent" system. It is therefore of considerable importance that witnessed written invention records should be kept on a real-time basis, in order to be able to prove inventorship and invention date.

When to File

The basic stimulus for filing an initial patent application should be the development of an economically worthwhile, patentable invention.

According to Israeli Patent Law, the definition of a patentable invention is a device, method or process, which is novel, has an "inventive step," and is useful. You should consult with a licensed patent attorney as to whether your particular invention is patentable.

Patentable or Unpatentable

"Novelty" is a relatively simple criterion, the test for which is a one-to-one comparison of the invention with what is known.

An "inventive step" can be said to be present if the improvement possessed by an invention would not be obvious to a person of average skill in the art. While this definition does not help the layperson a great deal, it is essentially interpreted as follows: does the sum of any pieces of prior art add up to my invention? If yes, then the invention is obvious and unpatentable.

This will still sound confusing and unclear to a layperson, and for a very good reason: a common reason for rejections of patent applications by patent examiners is lack of inventive step.

A skilled patent attorney should usually be able to initially draft the application so as to either circumvent this type of rejection from the outset, or to lay the groundwork for being able to successfully argue presence of inventive step, and so bring the application to registration.

This is also one of the major reasons why inventors should not attempt to draft a patent application on their own.

Your patent attorney will give an opinion as to whether the invention constitutes fundamentally patentable subject matter. By way of illustration, except in the US and Australia, methods of therapeutic treatment of the human body are fundamentally unpatentable. Software and so-called "internet patents" were also considered to be fundamentally unpatentable, although most jurisdictions now allow patents of these types.

Subsequently, a determination should be made as to whether the invention satisfies the requirements of "novelty" and possessing an "inventive step." The patent attorney will provide an informed opinion, based on interpretation of a substantive database search.

In most countries, the novelty and inventive step requirements are absolute. Accordingly, the existence of "prior art" in any country may be enough to render an invention unpatentable in any other country, which is why a database search has to be as broad as possible.

Ben-David notes that no search can find all the relevant "prior art." A positive opinion regarding patentability should be taken as indicating that the invention in question probably does contain some patentable aspects.

Beware, Beware

"Novelty is often destroyed by inventors by publishing academic or scientific articles, displaying at exhibitions, or just by careless sharing of information," warns Ben-David. He cautions entrepreneurs with the following offering:

		Consult a patent attorney prior to disclosing anything to anyone.
		Never share information with anyone without signing a non-disclosure agreement (NDA).
		Never assume that the mere existence of an NDA will provide adequate protection. In most cases, you should file a patent application before disclosure to a third party, whether or not you have, or will have, an NDA.
		Prior to filing a patent application, never depend on a third party keeping your confidential information secret on the basis of a signed NDA, unless you would trust him or her even without a signed NDA. In practice, this rules out most third parties.

To Patent or Not To Patent

It may be inadvisable to patent an invention that can be maintained as a trade secret. Patents have a normal life span of no more than 20 years from the date of filing an application. As part of the patenting process involves publishing the contents of a patent so as to be freely available to the public, a patent for an invention whose use may be undetectable to a third party, for example, a chemical process, may provide highly valuable information to a competitor. Exposed by patenting, the unfortunate inventor will be powerless to detect the competitor's infringement of his or her patent.

It needs hardly be said that few inventions can be kept as trade secrets. The question then becomes "when do I file a patent application?" Just bear in mind that by adopting timing-specific strategies, it is possible to determine the publication date of the patent application.

The Application

Following a comprehensive database search, the patent attorney will prepare an application that includes a background section that describes the prior art and its disadvantages, a summary section that relates to the main points of the invention, a brief description of any formal drawings that may have been prepared, a detailed description of various embodiments (examples of how the invention may be reduced to practice), and claims. Claims are numbered paragraphs that define the fundamental principles of the invention for which patent registration is being sought.

Leave It to the Professionals

Drafting of a patent application is a highly skilled task that should be left to the patent professional. It would be a pity to expend vital energies in preparing "patent-like" documents for the patent attorney, when your time would be much better spent in asking the patent attorney what informational materials are needed from you in order to prepare a patent application