Risks for Patent Applicants
There may be many reasons for obtaining a patent and gaining the exclusive rights a patent secures. The patent system is based on the simple consideration of encouraging inventors to publish their work in return for a favour, the grant of a patent promising exclusivity for a set period up to 20 years. To obtain that grant you are obliged to fully and clearly describe and define the invention in your patent specification and appended claims, which when published will instruct subsequent innovators about your advancement as well as clearly define the area they are excluded from by the grant. If you fail to describe and define your invention adequately, your patent, if challenged, may be held invalid and unenforceable.
The sceptics say "nothing's new" but the success of the patent system worldwide proves that wrong, it all depends on how you define "new" (found in each appended claim) and importantly, how you describe your invention. To qualify for patent protection your invention must be new and non-obvious as judged by the words in your patent specification, not by the worth of your invention.
It is important to note that a valid Patent grant will not guarantee the right to exploit the patented invention but it does provide the right to stop others from exploiting the patented invention.
Confused? For example, if Tom had been the first inventor of flashing vehicle indicators and obtained patent rights Tom would be granted the exclusive right to exploit his invention, in effect, granting him the right to stop all copiers.
A copier, in respect of flashing indicators per se, could include Dick, a later patentee who invented self-cancelling flashing indicators. Effectively, though not necessarily knowingly, Dick took Tom's flashing indicators invention and added a self-cancelling function, which in the eyes of the patent office provided the necessary new feature to secure patent rights.
The point is unfortunately, Dick's patent did not afford him the right to exploit his self-cancelling flashing indicators invention as his product included Tom's basic "flashing indicators" idea and thus any sale of his product would have infringed the broad patent protection afforded to Tom.
In this scenario a market insistence for self-cancelling indicators could lead to vehicle manufacturers obtaining the right to utilise flashing indicators from Tom and the right to make them self-cancelling from Dick who could otherwise be denied benefit from his self-cancelling invention, at least until Tom's patent had lapsed.
Alternatively Dick could have sold self-cancelling conversion kits, but if his patent described his invention as flashing indicators with a self-cancelling function and his patent may not have enabled him to stop others from supplying similar kits.
Still confused? This is a simple but very probable situation. If you need further advice I can help.
That's the downside, on the upside, one of the most famous rewards for invention was an award granted in the US to Robert Kearns for inventing intermittent windscreen wipers. Although simple in concept, he was awarded damages of $30,000,000 as a result of the unauthorised use of his patented invention by several US automakers.
Successful patent applicants in terms of making an income from their inventions, just like other successful people in business, have to navigate a practical path through the many obstacles which will appear in their path to achieve their desired result.
Patent applications including the description of the invention are not published as soon as they are filed, they remain unpublished and unsearchable for a period of eighteen months. Thus nobody can search to ensure that their invention is in fact new before they file a patent application. However, searches should be conducted to minimise your risks.
Potentially you could be unaware of an earlier publication that could render your patent invalid, but then only if an interested party were to put such evidence before a Court, typically as a defence against infringement. It is analogous to being innocent until proven guilty, a patent is assumed valid until proven invalid.
Thus all forms of enquiry available to you should be made at the outset to minimise the inevitable risk you must take in the course of exploiting your invention.
The internet is a wonderful tool for such enquiries, enabling you to search patent and other databases and availability of similar products.
There are professional patent searchers in Australia and abroad who are expert in locating relevant earlier art. The Australian Patent Office will also, if requested, conduct an International type search after you have filed a provisional application.
If you need assistance I am happy to work with you to develop an IP strategy to suit your circumstances.
John Pizzey, patent and trade mark attorney