Once a new invention has come to life, the protection of the invention may often be a daunting task, especially to novice inventors and entrepreneurs. The following simple steps will assist with the protection of a new invention, and also the realisation thereof into a viable commercial tool capable of generating returns to the inventor and other interested parties:
- Keep it secret!
To qualify for patent protection, an invention needs to be novel, inventive and capable of application in trade or industry. Novelty means that the invention must not have been published in any way or form, including written, oral, electronic or any other disclosure, by any person before a patent application has been filed in respect thereof. Any disclosure of an invention before the filing of a patent application will destroy the novelty of the invention, which will detrimentally affect the possibility of obtaining a valid and enforceable patent. If you do need to disclose your invention to obtain funding or to manufacture a prototype, ensure that you have a proper non-disclosure agreement (NDA) in place.
- Research your idea
Do an internet search for your invention before approaching a patent attorney. This will assist in determining whether or not your idea has been anticipated by someone else before you, and will also assist you in determining the closest prior art to your invention. In doing so, you will be able you to fine tune your invention, which will significantly increase your chances of obtaining an enforceable patent with the widest possible scope of protection for your invention, and will also potentially decrease the time that your patent attorney will have to spend to draft the patent specification.
- Be thorough
Accumulate and log as much information as possible on how you came up with the invention, what problems you are aiming to address or improve on by way of the invention, who may have contributed to the invention, what other inventions are available that are close to but different to your invention, etc. This will assist your patent attorney to adequately describe your invention when drafting the patent specification, and also to overcome prior art that may be similar to your invention. By keeping a comprehensive account of your research into the invention, you will also be able to prove ownership of any patents in respect of the invention if a dispute to the ownership thereof arises.
- Don’t delay
Ensure that a patent application in respect of your invention is filed as soon as possible. The longer you wait, the more the chances become of your invention being disclosed or even independently invented, and possibly patented, by another person.
- Surround yourself with the correct partners
The costs of obtaining a South African patent for your invention is relatively low, but once you pursue international protection, the costs escalate significantly, mainly due to the vulnerability of the Rand against the currencies of the major economic territories. If you do not have the necessary funds, it is imperative that you partner with the correct business associates and investors. It is further crucial that you partner with a firm of intellectual property attorneys that you can trust will realise the value that the invention has to you, and to treat and respect you and the invention accordingly. This includes guiding you towards the best protection strategy in respect of your invention, and by further assisting you to elect the most appropriate countries and/or regions to file patent applications in to obtain the maximum monetary return on your ingenuity and financial investment.
- Plan a commercialisation strategy
A patent provides the patentee with a monopoly for a set period during which the patentee can ensure maximum benefit accruing from an invention to the exclusion of others. A patent is therefore of little value commercially if not accompanied by a well defined and structured commercialisation strategy. A commercialisation strategy is not necessarily limited to the manufacturing and marketing of the invention protected under a patent, but could also includes other strategies such as selling the patent, registering the patent in the name of a company and selling shares in the company, licensing the patent to competitors, or various other possibilities.
- Develop a branding strategy
A proper branding strategy is imperative to ensure that the invention protected under the patent is associated with a strong brand. A strong and well thought out trade mark will lure potential investors, will create goodwill in the market towards the invention, and will further ensure the longevity of the invention in the market place, long after the patents registered in respect of the invention have lapsed. A solid brand could also lead to other possibilities such as franchising, which further ads to the value of the invention to potential investors, business partners and most importantly, the patentee.
DM Kisch Inc is a full service intellectual property firm that is able to assist in ensuring that the maximum benefit from innovation and ingenuity is obtained. This includes the registration of a patent to protect the invention, the commercialisation of the invention, and the registration and realisation of a solid and profitable brand.
For more information, please contact:
Tel: +27 11 324 3154
Author: Jaco Theunissen
This article is a general information sheet and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact your legal adviser for specific and detailed advice.