5 things you should avoid before filing your patent application

Have you decided to apply for a patent? In this case, you might be wondering what the steps before filing your patent application are. We prepared a guide for you, divided into two parts: what you should do and should not do at this point. 

This article is the second part of the guide.

1. Do NOT tell your idea anyone before talking to a patent attorney

   We mentioned before that keeping your invention secret until the date of filing is imperative. It is strongly advised to have a consultation with your patent attorney before you would attend any other meetings. This way, you can figure out a strategy with your patent attorney and can make a decision on the timing for filing the patent application that aligns with your interests and business plan as well. 

   
   

2. Do NOT talk to anyone without a signed NDA (except for your patent attorney)

   Disclosing your idea without adequate legal protection is dangerous, since it might lead to unwanted publication before the date of filing. Also, someone may use knowledge of your idea for their own gain - which usually means your loss. Do not use NDAs too often, it is better to keep the number of your meetings before the date of filing to a minimum.

   You can download a template (prepared by the WIPO) by clicking here: Download document

   
   

3. Do NOT prepare the patent application yourself

   Although you might save a few thousand euros if you write your own application, it is not advisable. The claims define the extent of your granted right. So, even if your patent is granted, it will not be valuable unless the claims are professionally drafted. If your claim contains too many features, or a non-essential feature, it will be very simple for your competitors to circumvent your patent.

   Let's say your granted patent claim reads: "A furniture having four legs." It is not a bad claim, but is not good either. It will grant you right over every furniture (tables, chairs, etc.) having exactly four legs. On the other hand, if your competitor builds a chair having only 3 legs or a table having 6 legs, he circumvented your patent and can sell his products without having to pay license fees to you. A patent attorney would have phrased your claim as: "A furniture having at least three legs.", since this would cover even more furniture. However, most inventors write even worse claims, including many non-essential features: "A chair having four legs, a back and two armrests." This claim only covers chairs having all these features at the same time. If someone sells chairs having no armrests or backrests, they will not infringe your patent.

   This is a very stupid example, inventions are much more complex. However, hopefully it helps you understand the logic behind claim language and how important it is to have good claims.

   Given the legal skills required for claim drafting, it is highly advisable to seek legal assistance from a patent attorney when drafting a patent application. As you can see, the risk of making mistakes is high.

   
   

4. Do NOT publish your idea

   Since novelty is one of the requirements of patentability, you will not be able to patent your invention if it is already published, i.e. is not new anymore. Thus, the disclosure of your idea before the filing date will prevent you from obtaining a patent later. So please do not advertise your new product at a conference, do not write a blog about it, forget vlogging about it, and please do not start a kickstarter campaign showcasing your idea. Only use crowdfunding after filing a patent application when you already have the "patent pending" status.

   
   

5. Do NOT take advice from non-professionals (even lawyers)

   We are absolutely not against lawyers or enthusiastic entrepreneurs sharing their experience, it is often valuable. However, it is dangerous to take someone's advice on a subject they have never learned about and are not qualified to assist you. In most countries, like Hungary, where I got my first qualification, patent attorneys have to study at least 5 years in addition to having an MSc degree in science or technology. It takes about 10 years (5-year-long university MSc course included) to become a national patent attorney, e.g. a Hungarian patent attorney. Becoming a UK or a European Patent Attorney is just as hard work. Lawyers neither have training about Intellectual property nor have the background to understand technical inventions. Make sure to get professional advice and use reliable online sources. Making mistakes costs a lot, since there are strict deadlines along the process, you cannot file patent applications twice, or add new information to your application later.

Author: Zsofia Pintz
Published: August 2020
Updated: July 2023