How to get a patent for an invention and not leak information to competitors

2024 Author: Malcolm Clapton | [email protected]. Last modified: 2023-12-17 03:44

Several ways to describe your development so that the patent is registered, and competitors do not have the opportunity to duplicate it.

For an innovative idea to become capital, you need to successfully launch it on the market. For this, it is not enough to create a product; it is important to take care of the protection of intellectual property and to effectively patent the development.

A well-executed patent is a legal monopoly, a tool for capitalizing a company and attracting investment in business. However, often inventors, when filing documents for a patent, try to keep the details of the technology secret, fearing theft of ideas. This leads to a narrowing of the scope of rights and a decrease in the resistance of the patent to challenge. To protect yourself from mistakes, it is worth knowing about the nuances of the process.

Publicity risks

First, you need to understand how the patenting procedure itself goes. On behalf of the inventor or a legal entity, a package of application documents is submitted to the Federal Institute of Industrial Property (FIPS). It includes:

• patent formula (the essence of the invention in one sentence);
• a detailed description that clarifies the details;
• essay;
• application for registration of a patent.

Also, drawings and other documents that disclose the idea in more detail may be attached to the application.

The package is submitted to the FIPS, and after one to one and a half years, information about the invention is published on the department's website.

It is at this stage - after the publication of the description of the development - that the innovator faces risks.

On the one hand, the patent applicant must compose the description in such detail and clear that an abstract specialist in the relevant field of technology could reproduce the invention and obtain the claimed technical result. Otherwise, the owner of the idea risks receiving a refusal from the FIPS for patenting.

On the other hand, the patent publication will be available to everyone, which means that anyone can reproduce the invention. From the point of view of legislation, the patent holder has the right to protect his idea from illegal use, but it is very difficult to track infringers and fight them. Therefore, it is necessary to describe your development in a balanced way.

How to obtain the rights to an invention and maintain a competitive advantage

Method 1. To classify some of the information as know-how

How to implement such a security strategy? When filing a patent application, you can keep some of the information secret or, as they say, as know-how.

According to the Civil Code of the Russian Federation, know-how (secret of production) is information of any nature that has actual or potential commercial value due to the fact that it is unknown to third parties. Third parties should not have free access to such information on a legal basis, and the owner of such information is obliged to take reasonable measures to maintain their confidentiality, including by introducing a trade secret regime.

Example. The innovator first came up with the idea of using nickel slag as aquarium soil. In this case, it is enough to indicate general information about the composition of the slag, the technology of its production and purification, allowing it to be used for its intended purpose, or just an example of the invention. At the same time, it is possible to introduce a commercial secret or confidentiality regime at the enterprise and formalize as know-how the peculiarities of the processes of cleaning and preparation of slag, which determine its highest consumer characteristics.

This strategy is more suitable for patenting applications and methods based on new principles.

Then the general essence is reflected in the patent, and the detailed and most important information remains confidential, while the company's employees are responsible for ensuring that the information does not go into the wrong hands. As a result, a potential competitor who will like a patent will have to spend a lot of time and resources on their own research, and the creator of the idea by that time can bring his product to a new level of quality.

Method 2. Disclose information about all possible and impossible embodiments of the invention

As paradoxical as it may sound, the inclusion of a large amount of information in the description can reliably protect against illegal use of the idea. When submitting documents to FIPS, there is the possibility of one interesting maneuver - providing the maximum number of options for implementing the invention.

For example, in a patent description, you can set out the best, worst, and even nonexistent options for your design. This will help to obtain the greatest amount of rights and at the same time protect valuable information by hiding it in lengthy wording.

The overall picture is significantly blurred due to the many options, and it will be more difficult for competitors to find out which of the declared is the most effective.

The owner of the idea will play into the hands of the use of so-called hyperonyms, or generic concepts. We are talking about the broadest possible formulations of individual features of an idea.

Example. The creator of the double distillation distillation unit does not need to indicate in the formula a specific embodiment of the apparatus. The idea can be defined as follows: "The distiller contains two series-connected stills, one of which is placed inside the other." In this case, a large number of drawings can be attached to the description with various options for placing and connecting the distillation stills, among which there will be the best one.

This strategy is primarily relevant when patenting devices, when it is extremely difficult to keep secret design features, since they can be determined through product reengineering. Blurring the description will disperse the focus of attention of potential counterfeit manufacturers at least until the moment of large-scale production, due to which the copyright holder can again be one step ahead.

Method 3. Designate the range of application and classify important

If we are talking about the patenting of substances, methods of their production or other technological aspects, then, as a rule, when patenting, the claims include information on various technological modes or on the chemical composition of substances. Such information should be presented in the form of ranges.

Inventors who use such techniques incorrectly run the risk of being left without a patent even after registering it. The fact is that often when using ranges, the inventor specifies them at random or expands them to such an extent that the solution stops working. At the same time, few people know about the possibility of challenging a patent based on the criterion of "industrial applicability", when a patent is invalidated if its formula and description do not allow obtaining the claimed technical result. How to specify ranges correctly?

It is necessary to experimentally determine the upper and lower boundaries of each parameter, that is, to find out at what maximum and minimum characteristics the technology remains operational.

Example. Scientists have invented a substance for water purification from oil based on polysaccharide microgels. The concentration of microgels in water should be between 0.1 and 20 grams per liter for the process to have the desired result. At a lower concentration, microgels will not trap oil at all, and at a higher concentration, the substance will immediately precipitate.

In this case, in the description of the patent, it is necessary to give examples indicating the technical result when the concentration of microgels of polysaccharides will be within these limits. One or more examples should be added indicating the concentration within this range. It is also worth providing a rationale for why the technical result is not achieved outside the specified range.

With this approach, the innovator, on the one hand, provides reliable information about the technical solution, which means that he eliminates the risks of refusal to register and contest a patent. On the other hand, it does not disclose and can classify as know-how the most effective way to implement its idea. The inventor is buying time again as competitors go through a million combinations of different parameters in search of the most effective options.

Outcome

The considered tools allow increasing the efficiency of patenting, reducing or eliminating some risks, but they are not a guarantee of protection. It is necessary to take a comprehensive approach to the processes of intellectual property management in each individual case, taking into account the specifics of development, copyright holder, technology, competitors and much more.

It is important that the inventor understands the need to be open and honest with the patent specialist. You should provide comprehensive information, immediately pointing out the places where the know-how is contained, and talk about all embodiments of the invention. By providing false information, the inventor runs the risk of being left with a broken patent.