What to do before filing?

Have you decided to apply for a patent?

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

This is the first part.

11 actions to take before filing:

1. Keep your invention secret until the date of filing

   If you ever plan to apply for a patent, it is very important that you do not publish your idea before filing the patent application. A publication before the date of filing should not happen either on purpose or by accident. 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. not new anymore. You can prevent unwanted publication by asking people to sign an NDA (Non-Disclosure Agreement), see the next point.

2. Before discussing your invention with anyone, have them sign an NDA (Non-Disclosure Agreement)

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

   However, even if you are protected by an NDA, be careful what you reveal to others and mainly what you tell experts in the field of your invention. We recommend minimizing your meetings before talking to a patent attorney and before the date of filing.

   You do not need to ask a patent attorney to sign an NDA, see the next point.

3. Talk to a patent attorney

   The first step should be talking to a patent attorney in order to plan your overall intellectual property (IP) strategy. You should be safe disclosing details of your idea to people whose professions require them to observe confidence in all dealings with clients.* (This includes patent attorneys, other legal professionals, EPO and national IP office personnel.) When dealing with anyone else - companies in particular - you should not disclose anything without at least a signed non-disclosure agreement (NDA).

4. Study the patent application process

   Applying for a patent is a legal process having several strict timescales and usually not extendable deadlines. It is definitely not something to rush into. Take time to study the process and ask a patent attorney all of your questions before the filing of your patent application. Make sure to get your information from reliable sources, like a patent attorney or the EPO (www.epo.org).

5. Study the competitors' products and patents

   You probably know who your biggest competitors are. Take time to study their products and search for their patents. Think about what your competitor does well, and think about how your product could work better. Understand the differences between the products and try to think about how you could improve your invention or new features you could add. Knowing the prior art and the similar solutions in the market can also help you prove during examination that your invention is new and inventive.

6. Study the costs

   When you ask your attorney what fees you should expect when filing a patent application, you will probably receive a cost estimate including a service fee for drafting, filing and official fees for filing and search. However, later in the process there are other fees, like examination and designation fee after publication, annuity fees for each year from the 3rd year (the annuity for the 3rd year must be paid on the second anniversary of filing), preparing responses to office actions, grant fee, validation fee, etc. Each step (filing, patent prosecution, grant and validation) costs thousands of euros, not mentioning the costs of enforcing your patent rights. Surprisingly, translation fees are also a notable part of the costs.

   Do not file a patent application if you cannot afford professional representation or if you do not have the budget for paying the maintenance fees after 5 years.

   You can find the current fees of the European Patent Office here.

   We have a full article on the costs of patenting here: “Costs of patenting”.

7. Think about whether you really need a patent

   Is a patent your best alternative, or would you be better off with a trademark and spending more money on marketing? Does your invention has very short life cycle? Would it be easier to keep it a secret? Can you build a profitable business around your invention? It is very important to think about whether you really need a patent in order to avoid spending too much time and money on something you do not really need.

   See the article including more thought-provoking questions here: “Do you really need a patent?”.

8. Know what you want to achieve with a patent

   If you know the reason why you need a patent, it is so much easier to create your IP strategy and adopt during the patenting process. For example, should you need the patent only for the pending status, you might be interested in slowing down the patenting process. This way, you can also spread out the costs, which has its obvious advantages.

   We collected the most common misconceptions about patents so that you do not have unrealistic expectations from a patent: “The most common misconceptions about patents”.

9. Order a professional prior art search

   A prior art search will help you assess the state-of-the-art in a specific technological field and evaluate the patentability of your invention, in particular novelty and inventiveness. Patent documents are easily accessible through online patent databases, like Espacenet, a high-quality but free patent database maintained by the EPO. (Espacenet contains over 140 million patent documents from all around the world.)

   During the search, we use keywords describing your invention. This way, we will have a list of similar inventions that we can study in more detail. As a result, you will get a patentability opinion, and also the idea of the latest developments in the relevant technical field. In the patent database we can also search for your competitor's patents in order to monitor their activities and avoid infringing their rights.

   If you have time and understand patent language, you might be able to do the search yourself, using the EPO's Espacenet database for instance.

   TIP: If the patent search reveals an identical invention which questions the novelty of your proposed invention, dig deeper. Study the patent documents and figure out what you could improve in order to get both a better and a patentable product.

10. Prepare a thorough description of your invention (invention disclosure report)

    It is not allowed to add new information to your patent application after the filing date.**

    Thus, it is very important to write a detailed description before filing the application and to include all possible embodiments. You will not be able to add new features and examples later (for example when trying to overcome novelty objections). When describing your invention, think about how you would circumvent your own patent, and mention all the alternatives you could come up with in the application.

    We have a full article on how to prepare the invention disclosure form here: What is an information disclosure document?

11. Plan your overall intellectual property (IP) strategy

    There is no strategy that fits everyone. The best strategy is the one that suits your purposes and aligns with your company’s general strategy. If you plan your strategy thoroughly, you can start the whole patenting process prepared. We suggest discussing your plan with your patent attorney, and do not forget to think about other forms of IP, such as trademarks and designs. Your IP strategy will greatly depend on your goals, your budget, the size of your company, your business plan, and so on. With a profound IP strategy, you will have time to prepare the best patent application, will be able save money, plan the timing of your filing and your business negotiations, and choose the countries where you need a patent, etc.

The second part of the guide can be found here: “5 things you should avoid before filing your patent application”.

* Regulation on discipline for professional representatives (OJ EPO 1978, 91, OJ EPO 2008, 14)
Article 2 - Professional secrecy:
”A professional representative shall be bound not to disclose information accepted by him in confidence in the exercise of his duties, unless he is released from this obligation.”
See the full legal text here.

** This is defined in Art.123(2) EPC:
"The European patent application or European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed." 
See the full legal text here.

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