Patent terms and recommendations

A patent confers upon its holder, for a limited period, the right to exclude others from exploiting (making, using, selling, importing) the patented invention, except with the consent of the owner of the patent.

A patent is a form of ‘industrial property’, which can be assigned, transferred, licensed or used by the owner.

Patents are territorial, in effect e.g. an Israeli patent is only valid in Israel.

In order to receive protection as a patent, the invention must be technological, generally a product or a process,  not an abstract idea nor aesthetic creation,  novel, and not an obvious combination of existing products or processes. So, in order to determine novelty,  the hopeful entrepreneur before spending too much time and money, should conduct what is known as a “prior art search”  A good suggestion with respect to a product is to start by searching the web for the proposed product for sale. Other avenues may include library services available in various jurisdictions or  specialty catalogs that may carry a product such as yours. If you do not find your proposed product at this initial stage or you find something that does something similar but you think your product does it better,  then it may be time to do a preliminary prior art search which may include patents and/ or technical papers for example.

It is possible for an inventor to do a fairly good preliminary prior search themselves. After a preliminary search it may be a good idea to have a professional  patentability search which are generally performed by companies with expertise in patent research. Cost of such a search is around 500 USD.

Once you have selected a practitioner, one of the first tasks and probably one of the most important  task is to determine the scope of your invention. For this purpose, you should provide your practitioner with some information,  one or more sketches, drawings and/or written description which describe sufficient detail so that the practitioner may research the field of interest, determine the closest prior references, products, publications (known collectively as “prior art”)and compare  them to your disclosed invention. If you already have references which you believe are representative of the closest prior art, you should provide these to your practitioner as a starting point.

At this point, a short paragraph is drafted which describes the scope of your invention emphasizing the elements or steps which are novel and significant.

Once an initial scope of your invention is found, it may be advisable to search again specifically using keywords based on the short paragraph describing your disclosure. The short paragraph will eventually be used as a basis for a claim which defines the scope of the invention in legal language in the patent application. The second or even a third search may be used recursively to further refine the claim that will eventually define the scope of invention in the patent application to be filed. The extra searching is intended to mimic the searches performed by a patent Examiner and will reduce the chances of receiving an outright novelty rejection of overly broad claims.

Now is the time for the inventors to brainstorm in cooperation with the patent practitioner in order to come up with the most comprehensive single inventive concept which best describes the invention.

Online patent authorities vary in the amount of information disclosed about patent applications, as well as the amount of access for an applicant/ inventor to file things with respect to their patent applications online.  Some web interfaces are easier to use. Here are some links:

Worlwide Intellectual Property Office (WIPO)- Patent Scope Search

USPTO- United States Patent and Trademark Office

IPSUM- United Kindom Online Patent Information and Document Inspection Service

European Patent Register- European Patent Office

Free Patents online

Google Scholar

Google Patents

Need some clues as how to respond to an office action from various patent jurisdictions? Here are some useful blogs/ websites:

Patentably Defined (deals with items with respect to USPTO)

PEER TO PATENT (provides a comparison of examination strategies of various jurisdictions via ‘crowd sourcing’ techniques). Crowd sourcing is the practice of obtaining needed services, ideas, or content by soliciting contributions from a large group of people, and especially from an online community, rather than from traditional employees or suppliers.

What is a design?

A design is the outward appearance of a product or part of it, resulting from the lines, contours, colours, shape, texture, materials and/or its ornamentation. Organisations ranging from small and medium-sized enterprises (SMEs) to huge multinationals use the designs registration system to protect products, such as industrial or handicraft items, including packaging, graphic symbols and typefaces.

Designview is an online consultation tool allowing any Internet user to search, free of charge, the designs of all participating offices, including Office of Harmonization for the Internal Market (OHIM) and National Offices. It gives access to design applications and registrations provided by the participating offices though a single platform. Each office owns the content it makes available and is responsible for its daily update.

Trade marks are badges of origin. They distinguish the goods or services of one trader from another and can take many forms; for example words, slogans, logos, shapes, colours and sounds.

Trade Marks are registered for specific goods or services within individual subjects, known as classes. It is possible for others to register identical or similar marks as long as it is in a different, unconnected class. For example Swan rental cars, Swan matches and Swan electricals.