Intellectual Property-patenting my idea?

triblex · 14-03-2007 05:03PM #1

have some simple thoughts, nothing to do with my research in the college and simply want to try some sort of commercialisation.
does anyone know how to do or where to start? is it easy (to kick off)?

Apiarist · 16-04-2007 06:14PM

Commercializing an idea is not easy, but you can get support and funding if you know where to look. The first step would be to talk to people from Enterprise Ireland.

Do not be afraid, a lot of people there are not heartless bureaucrats. Some of them are ordinary scientists and engineers, and if you ask them politely , they will be glad to explain how to develop your idea and start your business.

Visit the EI website first:
http://www.enterprise-ireland.com/

Also ask if there is somebody in your college who dealt with EI, or is involved in a start-up company, or has successful patent applications.

themole · 17-04-2007 02:13PM

I would recommend talking to one of the county enterprise boards. They deal with initial ideas and have some grants for surveys etc.

Afaik, Enterprise Ireland are more about helping out an existing company.

patto_chan · 13-05-2007 11:08PM

Useful references:
Irish Patent Office

UK Patent Office

European Patent Office

US Patent Office

Farouk.Bulsara · 15-05-2007 11:25PM

triblex wrote:

have some simple thoughts, nothing to do with my research in the college and simply want to try some sort of commercialisation.
does anyone know how to do or where to start? is it easy (to kick off)?

Dude,

Yes, patenting is relatively easy. There are two parts to a patent application - the patent disclosure (you have to tell the world how it works) and the patent claims (you have to stake out your intellectual property). For most inventors, the patent disclosure is straightforward. The patent claims can be trickier. Ideally, your claims should be as broad and as general as possible. For example, suppose you invent a new mouse trap. The claims should not just say "mouse trap" - this could be broadened to "rat trap", perhaps more generally to "rodent trap" or even "small quadruped trap". Patent agents can help with the claims bit, but in theory, you could figure it out yourself.

Check out the USPTO (US Patents and Trademarks Office) for examples of filed patents, including claims.

Talk to the Irish Patents Office. They have info and guidelines for inventors.

Fred

tak · 13-06-2007 02:34PM

Forget the idea of going to Enterprise Ireland or the County Enterprise Boards.

They are limited in what they may or ever could support.
I am certain that no CE staff is an ex-entrepreneur.
CEs depend on small amounts of funds from local banks, the council and so on.
They must achieve a spread of grants. And there is an emphasis on pseudo-social and local enterprises.
No way have they the experience to assess a technical proposal.

The EI people are largely ex-execs or ex-techs from public service or big companies.
I have never heard of anyone who got start-up funding from them till they had first started up and were trading for themselves.

The actual people who will be doing the work for you if you choose to go the patent/reg design route are the patent agents/attorneys of the main patent agencies.

You'll find their names in the golden pages.
Most but not all are in Dublin.

Some may offer an initial free consultation.
Make the most of this freebe by reading through all the free leaflets from the Patent Office. You can then use the time to ask the most important questions and not have it ground out on the basics.

As said already, the patent process is long and will involve a publication of the actual application, describing all the details about it.
This is okay if you have the funds to fight an infringement but most folks do not. Patent lawyers don't come cheap and they must be paid.
Some inventors get support from venture capital companies but at the expense of them taking a good chunk of the patent rights or shares in the new firm.
Others (where the important development is not externally clear, eg where the invention is process to produce a product) simply start producing and keep the matter as a secret till the have the capital to defend an application.

But the first thing is to learn in general about the patent application process and then discuss the matter non-commitally with a patent agent with expertise and experience in that area of technology.

DublinDilbert · 13-06-2007 03:30PM

The problem with patenting an idea is:-

A) A patent costs a large amount of money to get. The patent application has to be formatted in a certain way, with certain claims.. it must also contain details about the background for the invention ect.. typically people use specialist lawyers to prepare and process the application.

b) a patent costs a large amount of money to defend... for example if you found that a company was in breach of your patent, and you had to peruse them via the courts it would cost a huge amount of money...

themole · 13-06-2007 04:05PM

tak wrote:

Forget the idea of going to Enterprise Ireland or the County Enterprise Boards.

They are limited in what they may or ever could support.
I am certain that no CE staff is an ex-entrepreneur.
CEs depend on small amounts of funds from local banks, the council and so on.
They must achieve a spread of grants. And there is an emphasis on pseudo-social and local enterprises.
No way have they the experience to assess a technical proposal.

The EI people are largely ex-execs or ex-techs from public service or big companies.
I have never heard of anyone who got start-up funding from them till they had first started up and were trading for themselves.

The actual people who will be doing the work for you if you choose to go the patent/reg design route are the patent agents/attorneys of the main patent agencies.

You'll find their names in the golden pages.
Most but not all are in Dublin.

Some may offer an initial free consultation.
Make the most of this freebe by reading through all the free leaflets from the Patent Office. You can then use the time to ask the most important questions and not have it ground out on the basics.

As said already, the patent process is long and will involve a publication of the actual application, describing all the details about it.
This is okay if you have the funds to fight an infringement but most folks do not. Patent lawyers don't come cheap and they must be paid.
Some inventors get support from venture capital companies but at the expense of them taking a good chunk of the patent rights or shares in the new firm.
Others (where the important development is not externally clear, eg where the invention is process to produce a product) simply start producing and keep the matter as a secret till the have the capital to defend an application.

But the first thing is to learn in general about the patent application process and then discuss the matter non-commitally with a patent agent with expertise and experience in that area of technology.

The first step is seeing if the idea is any good. This is where getting advice comes in, advice from people in the field. If you do not know who to contact the enterprise boards can help with that.

The second step is then seeing if you can commercialise and/or patented the idea. One does not necessesarily imply the other. Entrepreneurs and capital investment firms can give advice on commercialisation. Patent attorneys can only help with getting a patent and are unlikely to know if the idea is good anough to warrant you patenting in the first place.

tak · 15-06-2007 12:28PM

themole wrote:

The first step is seeing if the idea is any good. This is where getting advice comes in, advice from people in the field. If you do not know who to contact the enterprise boards can help with that.

The second step is then seeing if you can commercialise and/or patented the idea.

Wrong.

And quite dangerous - to say nothing of the danger of wasting of a lot of time and work on the part of the inventor.

Why is this wrong advice ?

Firstly (if he believes it patentable and wants to try that route to commercialisation ) the 3 requirements needed for a patent are:

1. That it contain an 'inventive' step, i.e. a step that would not be obvious to a person with a good knowledge of that field.

2. That it be capable of commercial exploitation.

3. That it have had no prior publication.

Prior publication is interpreted quite broadly.
Talking about the invention to another person prior to submitting an application may well give rise to a counterclaim by that other person (or his associates) later. If the other person can show that he had concepts or prototypes before the date of the real inventor's application then it will be a matter in dispute. This situation is not desirable for any inventor.

c.f. 'Novelty' in webpage

http://www.patentsoffice.ie/en/patents_patentable.aspx

and Deadly Sin No. 2 in

http://www.epo.org/focus/patent-system/seven-sins.html

If Triblex has colleagues whom he can really trust to consider the value of the invention for him without claim-jumping, then fine - let him discuss it with them.
But it is unwise for him to discuss it with just some avuncular stranger within the industry into which his invention will eventually be marketed to.

I do not mean that all staff within CEBs or EI are hustlers on the make.
Some are very ordinary honest people with no great material aspirations nor any economic/social agenda doing their best to help.
But simple precautions are needed because at the end of the day young guys like Triblex have to take care of themselves in the real world of business.

Other cautions are needed. For instance, Triblex says that his idea is clear of all his work at college.
But he must be made aware that colleges nowadays - esp. science/engineering departments - will routinely look at patent applications made by their ex-postgrads and sometimes (where they feel that the invention made owes something to either the research program they have taken or the use of college lab facilities) make some claim on them.
In such a case he may need to show that his salient data, experiments, trials of pilot equipment, etc were made elsewhere since leaving college and before filing a patent application.

All this and other stuff can be threshed out as he studies the process and gets advice from patent agents.

Secondly (if he chooses not to go the Patent route to commercialisation):

In this case the only protection he has for his development is its secrecy, and the headstart that that gives him when commercialising it.
Trade secrets are much more common than patents in many industries as means of holding a competitive advantage, esp. in Sweden, Germany, Switzerland, etc.
Rivals wanting to acquire a trade secret would often just buy the company that has been set up around it.

The main thing now is keep your ideas under your cap till you explore all the options yourself.

Tak.

themole · 18-06-2007 03:17PM

tak wrote:

Wrong.

And quite dangerous - to say nothing of the danger of wasting of a lot of time and work on the part of the inventor.

You don't have to disclose how the invetion works per say to see find out if there is a market/need for it.

Just because something has never been done before and may well be patentable does not mean thats its a good idea that will make any money.

What i mean is to engage with people in the field in question to get a feel as to whether or not the invention is viable. This can be done without disclosing the idea or how it works. This of course all depends on what the actual invetion is. If its just a better way of doing something which has already been done, which is the case in most inventions, then it would be possible to discuss the market etc while not disclosing how the invention works.

If i for example i came up with a design for an engine which gives 200mpg, i could safely discuss the options with people while not disclosing how it works. In that case there is no novelty at all to protect in saying i can build the engine, all the novelty resides in how i do it.

I think you can get a lot of feedback without disclosing the how, which is where the novelty usually resides.

Buffer · 21-06-2007 08:25PM

Hi Triblex,

It's great to hear of people coming up with new ideas and looking to develop them.

Here is where I would start:

Do a search on the European and US patent office websites. It's not too hard to figure out and should give you a sense of the landscape in the area of your idea. Warning: it takes a while to get used to reading patent specs! The abstracts are less important (and more general) than the actual claims.
Think about who would use your invention, why they would use it, what makes it valuable relative to what they're doing right now.
Think about how you might commercialise it. You could build the thing and sell it to end-users, build it and sell it to companies, not build it at all but sell the patent to a company in the industry.
Quantify the value of any options you have considered, using reliable sources of information. For example, if it's a replacement for an existing machine, figure out who are the makers of them are and look at their shareholders' reports to see what their yearly sales figures.
Get advice, from multiple sources, to refine your analysis.

I'm just after encountering this thread, and I have comments related to other posts, so I'm going to post further replies to them.

Buffer.

Buffer · 21-06-2007 08:49PM

Posters (particularly Tak) have raised some interesting issues, most but not all of which I agree with.

tak wrote:

1. That it contain an 'inventive' step, i.e. a step that would not be obvious to a person with a good knowledge of that field.

2. That it be capable of commercial exploitation.

3. That it have had no prior publication.

This is correct and the essence of all patent rules.

A word of caution: different countries have different regulations; even in Europe patents are not harmonised, and for example the USA Patent Office is much more liberal in granting patents than most countries. So be careful where you read about regulations and check back with the Irish and European Patent Office websites for the definitive rules that apply to you.

tak wrote:

Prior publication is interpreted quite broadly.
Talking about the invention to another person prior to submitting an application may well give rise to a counterclaim by that other person (or his associates) later. If the other person can show that he had concepts or prototypes before the date of the real inventor's application then it will be a matter in dispute. This situation is not desirable for any inventor.

Two things are being mixed up here: it is true that prior publication of the ideas will invalidate all claims (at least in Ireland/Europe: the USA permits disclosure to a technical audience up to a year in advance of filing, I believe).

However, a personal conversation does not constitute publication.

The risk with personal conversations is that the person to whom you are talking might try to steal your idea. There are ways to avoid this:

A non-disclosure agreement in advance of discussing any of the 'enabling' ideas in the patent
Document the idea carefully, get it witnessed and dated by an independent third party, and file it securely so that you have evidence of prior claim on the idea (maybe use a solicitor; a document with the signature of your mate from the pub might be considered unreliable evidence of date)

tak wrote:

But it is unwise for him to discuss it with just some avuncular stranger within the industry into which his invention will eventually be marketed to.

That is true, at least until you defend yourself. However, industry feedback is general ESSENTIAL to being able to determine the potential value of your patent. So you need to figure out how to achieve this.

themole wrote:

What i mean is to engage with people in the field in question to get a feel as to whether or not the invention is viable. This can be done without disclosing the idea or how it works.

This is a key point. There is no problem in discussing your invention in terms of what it achieves, as long as you do so in a "non-enabling manner", meaning that you don't say how you do what you do. Note that if you file a patent, it has to be enabling; the trade-off for getting exclusive rights to your invention for the next 20 years is that you have to tell the world how exactly you did it, so that in Year 21 they can copy you.

Enterprise Ireland ARE helpful; bear in mind that it is a huge organisation with many branches, so make sure you are contacting the right people. I think this why so different posters on this thread have different opinions of their worth. They do have a unit for advice on IP protection (linked from the Irish Patent Office website.) They do have support for business startup schemes. They also have courses like "Enterprise Start", run over Fridays/Saturdays for several weeks, that can help a would-be entrepeneur to figure out how to start.

tak wrote:

Other cautions are needed. For instance, Triblex says that his idea is clear of all his work at college.
But he must be made aware that colleges nowadays - esp. science/engineering departments - will routinely look at patent applications made by their ex-postgrads (...)

This is an interesting point. You definitely need to check your contract of employment, if you have one. Roughly speaking, if you are employed to come up with new ideas in some field of endeavour, you might find that your employer owns the idea, not yourself.

In fact, this is not neccessarily bad news. For example, if a university has some claim on your idea, they may well have legal and technical supports in place to assist you in filing the patent, and then assign the patent to you, under some agreement whereby they and you divide the royalties.

tak wrote:

Trade secrets are much more common than patents in many industries as means of holding a competitive advantage, esp. in Sweden, Germany, Switzerland, etc.
Rivals wanting to acquire a trade secret would often just buy the company that has been set up around it.

In most industries, companies use a mixture of trade secrets and patents. Because, as I mentioned above, a patent consitutes full disclosure, it is common to keep some ideas to yourself.

Advantages of trade secrets over patents:

Keeping quiet doesn't cost the money or effort involved in patenting!
You don't have to reveal your invention in an enabling way
Doesn't expire after 20 years

Advantages of patents over trade secrets:

You have tangible proof that your invention is original: this is considered a company asset if your company is being bought out in the future
If other people are working towards solving the same problem, and one of them comes up with your solution later, they can't use it without licensing from you if you have patent (but they can if they just thought up the same secret as you)

Buffer.

Buffer · 21-06-2007 09:03PM

DublinDilbert wrote:

The problem with patenting an idea is:-

A) A patent costs a large amount of money to get. The patent application has to be formatted in a certain way, with certain claims.. it must also contain details about the background for the invention ect.. typically people use specialist lawyers to prepare and process the application.

b) a patent costs a large amount of money to defend... for example if you found that a company was in breach of your patent, and you had to peruse them via the courts it would cost a huge amount of money...

Fortunately, the costs are staged. The first cost is that of drafting and filing the patent in the Irish Patent Office, roughly €1000-€1500. The next cost comes at least a year later, when you are notified of whether it has been granted. You then have to decide whether to broaden your filing to other countries, etc. Costs rise steeply.

In searching for figures about costs, I came across this document from Enterprise Ireland:
http://www.irc-ireland.ie/downloads/PatentingBro.doc

If the invention is not something you can reasonably build yourself (eg it modifies an existing machine so you'd have to start building the whole machine) a relatively simple strategy is to make your filing and then, in the year before you get a final decision, sell your "patent pending" invention to a company already in the industry. You get royalties, they get to make it, they bear the costs when things get expensive.

Of course, you won't potentially make as much money from the idea as if you had set up a company yourself to exploit it, but you're not exposed to the risks and costs either.

Buffer.

tak · 29-06-2007 10:29AM

This thread cries out for the input of individuals of actual experience of pusuing their patent applications to the end, as opposed to those who know about the formal process, legalities, financial pros & cons, etc.

There is a human cost aspect to all this.
Intellectual property may hold promise of great funds in years ahead but what use is that to someone needing to get on with their immediate job, build his/her house, pay his/her operation costs, look after ill/ infirm relatives, contribute to his/her community, play sport, explore the world, etc.
And time and money given to one's IP interest will be at the expense of these concerns.

One does not hear much on this aspect from the professionals involved in the IP sector.
Yet it must be a very important factor to anyone considering starting out on what may be a long process.

The matter of financial assistance/instruments for those applying for IP protection would be of interest also, for obvious reasons, if anyone can give experience on this.

Buffer · 30-06-2007 04:43AM

tak wrote:

This thread cries out for the input of individuals of actual experience of pusuing their patent applications to the end, as opposed to those who know about the formal process, legalities, financial pros & cons, etc.

I for one am speaking from experience.

tak wrote:

The matter of financial assistance/instruments for those applying for IP protection would be of interest also, for obvious reasons, if anyone can give experience on this.

As I mentioned before, Enterprise Ireland can provide both advice and financial assistance in some cases; see this link on the Patent Office webpage.

Buffer.

tak · 02-07-2007 01:22PM

I for one am speaking from experience.

Well then, let's hear your story, Buffer.

And let's hear the story of any others with personal experience of pusuing patent/IP rights in Ireland.
The pros and cons of their various options, the effect on their life outside work and so on.
EI is not the sole funding option. All ideas and experiences most welcome.

Time we heard from Triblex again too - he's been awful quiet since he started all this . . .

Buffer · 06-07-2007 12:57AM

Well, I didn't come here for an Oprah experience, I was responding to the original poster's query.

However, I have one patent previously awarded and two in different stages at present. In my case, however, I had the support of my employer (including access to patent attorneys for drafting) in two of them, as well as co-inventors working on drafts and figuring things out with me.

Buffer.

Intellectual Property-patenting my idea?

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