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Patenting – Top 5 Common Mistakes

Intellectual property is one of the most important assets to business or company. Often, this intellectual property owned by start-up companies usually includes patents. Whilst the value of patents is typically well understood by businesses, a lot of businesses have a tendency to misunderstand or mismanagement their patent portfolio and these mistakes can cost businesses thousands of dollars.
Mistake 1 – Can’t be patented attitude
Often inventors and engineers are dismissive of the overall contribution of their own inventions. Inventors tend to make the mistake of believing that if the invention was obvious to them then it must be obvious to everyone else. This is simply not true. A patent is required to be both novel (meaning new) and inventive (meaning that it is a non obvious adaption of the earlier disclosures). Obviousness is not judged by the inventor but rather a non-inventive person with similar skills to the inventor at the date the invention was made. It is important to note that some of the best inventions have been the ones that seem obvious after someone tells you about them.

Mistake 2 – No Patent Strategy
Another one of the fundamental mistakes often encountered is that the business has no real plan or strategy as to why they have patents or what they plan to use them for. Businesses should, at an early stage, critically analyse the reasons for getting a patent. Good example reasons may include: a) stopping 3rd party businesses from entering the market; or b) investors would like see a registered asset on the business’s balance sheet prior to investing; or c) preserving intellectual property during testing and development stages.

Mistake 3 – Patenting in wrong countries
It is very important, that businesses properly evaluate which countries that they are filing patents within. A lot of businesses waste money by filing in countries that: have no competitors or wherein there is unlikely to be infringement; poor legal enforceability which typically leads to failed infringement cases; are generally costly jurisdictions due to translational issues; or have large ongoing fees for patent maintenance. Businesses need to compare the protected countries with their business needs and goals

Mistake 4 – Education
Businesses should encourage employees to be “patent smart”. Employees need to be educated about the basics of patenting and what patenting does. Specifically, employees need to now that you should not copy a claimed invention and that patents should be filed prior disclosure. It will also assist your business, if your employees know the basics of reading a patent and the differences between the specification and the actual patent claims.

Mistake 5 – Prior Disclosure

A common mistake is that some inventors disclose their invention publicly prior to filing a patent application. In Australia, this is not a fatal mistake (there is a 6 month grace period) but several overseas countries have no grace period for prior disclosure of your own invention. Preferably, you should file at least a provisional patent application prior to disclosing your invention to public or telling people about your invention (outside of a confidential environment).

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