10 Things Engineers Should Know About Patents

1. ‘A 10% change avoids infringement’ is nonsense

Some patents are easy to get around. Others completely block the way to commercially satisfactory alternatives to the technology.

The coverage of a patent is defined by the wording of the patent’s ‘claims’. Old technology (and obvious variants of old technology) can’t be validly covered, so there is a trade-off between coverage and validity.

Whether a patent is easy to get around or completely blocks the way depends on how the technology compares to older technology and on skill of the patent attorney to optimise the trade-off in the wording of the claims. More on quality patents.

2. Infringement can occur without copying

It’s possible to infringe a patent even if you had no idea that the patent or any similar product (and/or process) existed.

Generally speaking, a patent is infringed by making, using and/or selling a version of the patented invention without permission of the patent owner, regardless of whether or not the ‘infringer’ knows about the patent, the patent owner and/or the patent owner’s product. More on Patent Infringement

3. A patent does not give you the right to make, use or sell

Rather, a patent gives you the right to stop others doing those things.

Let’s imagine that your competitor has a patented product, you see room for improvement, and you patent the improved version. It could well be that your patent and the competitor’s original patent both cover the improved version and neither of you is allowed to make the improved version unless you and your competitor cooperate. A similar situation can come up even if you didn’t know about the competitor’s product. More on The Right to Exclude

4. There are no international patents

As a general rule, patents are granted country by country – there is no such thing as an international patent, although there are:

• regional patent systems in Europe, Africa, Eurasia and the Middle East which are exceptions to the general rule;
• international patent applications which last for up to 31 months and serve as stepping stones to separate national (and/or regional) patents.

International patent applications are often called ‘PCT patents’ because they arise from the Patent Cooperation Treaty.

5. A revolutionary advance in technology is not required

Valuable engineering inventions often go unguarded because their inventors wrongly assume their work isn’t patentable. A non-obvious technical advance, rather than a revolutionary advance, is enough. ‘Non-obviousness’ is a low bar generally requiring little more than a routine development in the technology or a plain and logical extension of what is already publicly known.

6. The technology should be kept secret until a patent application is filed

If patenting is of interest, it’s important that you keep the invention secret, and that you don’t sell or commercially use examples of the invention, until the first patent application is filed.

In most countries, premature publication and/or commercialisation is a bar to valid patent coverage, although Australia, New Zealand, the US, Canada and Japan have 12-month grace periods that excuse publication, and the Australian grace period also excuses commercialisation.

Normally we would have a patent application filed within a week or two of getting the go-ahead, and in an emergency we can rearrange other work to move faster if need be. Once an effective patent application has been filed, it’s no longer necessary to keep the invention secret – the invention can be made, sold and used, etc, without harming your patent rights in what you have invented so far.

7. A provisional patent application is not a quick and easy rough draft

A provisional patent application is a placemarker that lasts 12 months and reserves your priority to patent an invention. But it only works as a placemarker if the provisional wording and drawings are adequate.

Professionals put just as much effort into the wording of a provisional patent application as they do into the wording of a full patent application.

If the provisional is not up to scratch, there’s a good chance that you won’t be able to patent at all or, at the very least, in the long run there will be higher costs and inferior patent coverage.

8. Methods can be patented

Method patents can validly cover non-obvious technical processes such as new uses of old hardware. An Australian method patent not only covers the method in Australia but also the product (in Australia) resulting from using the method anywhere in the world.

9. Design rights are separate to patent rights.

Design rights protect the look of a product and can be pursued in parallel with patent rights. Design rights are simple and inexpensive, and enable you to mark your product with ‘registered design’. This can be particularly valuable where there is a higher risk of close copying, the look of the product is commercially important, and/or the look of the product is dictated by commercially important function(s).

10. Trademark rights are separate to patent rights

Trademarks are the ‘signs’ (such as names and logos) that traders use to mark and market goods and services as their own. Registering a trademark makes it much easier to stop others drawing away customers with similar trade marks.

Further Reading

Patent Fundamentals
How to Patent an Idea
Patent Attorney Mechanical Engineer