Why? What? When? How? These are some of the most used words in John’s dictionary. He’s pretty curious about the workings behind what happens in his life, and many of those have to do with the inventions and the workings of intellectual property in the world around him.
One of John’s friends has been working on an invention for a while, and he’s looking into both investors and potential business partners. John’s already advised him to keep the invention under wraps because of the novelty requirement for patents, but his friend would still like to move ahead with his business plan. So, John turns to see if IP Geek has a solution to this dilemma.
Hi IP Geek! A friend of mine has spent nearly two years on a specialised set of earphones, but he says it’s taking more time than he expected to finish them. He says he’s nearly done, and he’d like to tell people about how his invention works, but I told him that was risky because it would violate the novelty requirements for a patent. Is there anything else he can do?
Good call on advising your friend to secrecy. It is very much recommended that inventors keep their inventions a secret till they file their applications.
As for something he can do to help himself out… why doesn’t your friend try filing a provisional patent application?
Any application needs to disclose the invention it seeks to patent. The standard being that any ordinary man equipped with skills in that field will be able to understand how it works after reading the disclosure.
So if the invention is almost complete- ie, the inventive step is basically done, your friend can file for a provisional patent application. This allows him to get another whole year to iron out the kinks in the invention and draft the claims.
What exactly is a provisional patent application, though? Why file it instead of a non-provisional application?
When the invention is not completed but is at a stage where it can be disclosed, you can file provisional patent application to claim a priority date. Once that is done, all your novelty searches are calculated from the filing date of the provisional application, which means you can discuss and disclose your invention to third parties without fear of violating novelty requirements.
You need to remember to file the complete application within one year of the provisional though.
What happens if I need to make changes to the invention before the year is up? Or if I can’t file the complete application within the year?
If you can’t file the complete specification within the additional year, you lose the priority and the patent, and will need to file a fresh patent application. If you think major changes are likely, it’s better to not file a provisional application or to keep strictly to secrecy.
As long as the changes to the invention minor and all the crucial information is already in the provisional application, you can file the complete application with clearly defined claims. Claims decide on the extent of protection for your invention, and are the most important part of a patent.
Okay! I’ll have a word with my friend and let him know about his options- I know he’s been itching to get into business discussions. Thanks, IP Geek!
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