Launching a tech innovation? Have your patents in place first to protect your IP

In essence, the patent system is built on a quid pro quo between society and the IP creator.  Society sees value in IP creators revealing their unique solutions to problems we haven’t yet figured out.   

Suppose an IP creator spends years working on carbon capture and discovers an approach that vastly improves the energy efficiency of the effort, with an elusive, but surprisingly simple approach. As part of the patent process, the IP creator would explain how to make this happen.  Society then gets the secret solution and the IP creator receives a limited monopoly. 

A patent defines this limited monopoly, giving the right to take legal action against anyone who makes, uses, or sells this invention without a patent holder’s permission.  To be granted a patent, the invention must be something that can be made or used, new, and inventive.  For our carbon tech IP creator, the decision whether to start now or to continue with further research is important, since in most countries, the limited monopoly is awarded to the first IP creator to file.

Everything is governed by patent statutes and regulations that define the procedures for each national patent office; in the UK this is the Intellectual Property Office www.gov.uk/government/organisations/intellectual-property-office. 

There are a number of deadline-driven steps and requirements, from the actual filing of the application, the form that the application takes, requesting examination, and paying the fees at the appropriate times to keep the application in good standing.  

The good news is that the patent system provides a number of tools to lessen a large portion of this deadline management task.  The system allows for a first patent application filed in, say, the UK (on what patent professionals call the ‘priority date’) to provide patent pending status at no additional cost in most industrialised countries for up to 12 months from the priority date.   

So, a first UK patent application filed on December 1, 2021 would then confer patent pending status in most countries for the following one year up to December 1, 2022.   Getting this right can form a launchpad for success in many cases.  Getting it wrong can be a profound risk.

Getting this right can form a launchpad for success in many cases.  Getting it wrong can be a profound risk

The important condition is that the priority date is before  any public activity that makes the invention “available to the public” (a public disclosure of the invention is an example of this, among others) .  Often IP creators will intentionally delay any such public activity and will work closely with their patent professional to ensure, in writing, that the priority application is on file first. 

Some countries, such as the United States, also have requirements and associated deadlines that are based on other public activities where the invention may be concealed, or other confidential activities such as offers for sale, so getting professional help is key to planning to meet these deadlines.

Which means that for all tech creators out there, before you rush to tell the world about your latest invention, think about the consequences for your IP and make sure that you spend some time understanding this element of your business alongside your focus on funding, getting the right team, finding your customers and your sales and marketing.

Jim Gastle is a Canadian patent agent and co-founder of Terrifio