Secrecy is Critical
In this article, I stress the need for secrecy. Our Patents Act is clear on the requirement that an invention be novel on the date on which the first patent application is filed.
But it goes further than that. There is no law that will automatically stop someone from copying your invention. It is up to you to take some sort of positive action to protect your rights. At the very least, the party receiving the information should be under an obligation of confidentiality.
Try Patent Searching Yourself
We're living in the information age. Make use of the Internet to find out whether or not anyone else, anywhere in the world, has already come up with the invention.
Published patents are a great source of technical information. I have written an article on the benefit of patent searching. They can be searched using classification systems or with keywords, depending on which database is being searched.
As an inventor, you should use patent searching for two reasons.
Firstly, it will give you an indication of whether or not you might encounter problems during patent prosecution. For a snapshot of the process in Australia, here's a flowchart. During examination, the designated Examiner will access various patent databases around the world to assess the novelty of your invention as at the earliest filing date of a patent application covering your invention. As can be seen from the flowchart, this is usually the date of filing the provisional patent application. The Examiner will reject the application if relevant documents are found. Your search could save you the cost of filing a patent application and consequently change your business plan.
Secondly, it gives you an idea of the state of the art. To decode, that means the level and type of activity in the field of your invention. This information can be very helpful when you discuss your invention with your patent attorney. Your patent attorney should be grateful if you hand him or her copies of patents that you might uncover during your search, assuming that you do the search yourself.
It's understandable if your budget does not extend to the cost of carrying out preliminary searches professionally. That should not stop you from doing that search. There are many patent searching resources on the Internet. Professional searching can be quick and effective. But simply spending some time on the Internet learning about patent searching can be a valuable investment. Just type "patent searching" into your favourite search engine and you'll be presented with a number of useful sites.
Plan the search. Remember that you're looking for patent documents published online from anywhere in the world. Think of keywords that would be most effective. For example, consider the use of language in different countries.
Accept the Risk and Plan for the Worst
Never, never assume that your search is conclusive. There are over 50 million published patents out there. There is no way even the most experienced searcher will give you a guarantee.
A choice to develop and commercialise your invention is fraught with risk. One of them is that the patent application process will leave you poorer and without patent protection. Accept that risk and plan for the worst.
As Much Information as Possible
Take all your material with you to the appointment. You should have photographs and/or drawings of the invention to show the patent attorney. Prototypes are nice, but most patent attorneys I know would rather not have to deal with another contraption cluttering up their office. By all means, though, take one to show the patent attorney together with the drawings or photographs. Then you can take it back with you and save him or her trying to find space for it later on.
Good drawings with plenty of detail are incredibly helpful. Such drawings can often be filed together with the provisional patent application (see flowchart). That could help you get a discount. It can be very time-consuming and frustrating for a patent attorney to fiddle around with drawings that need work. He or she is not likely to consider anything less than the full price if there is drawing work to be done.
Technical, engineering or fabrication drawings are not necessary for a provisional application. Even hand sketches are suitable, provided they clearly illustrate the invention. You should make sure that they are capable of being clearly reproduced by photocopying or scanning.
Remember that you cannot protect what is not described. So it's no use leaving out "secret" information. First of all, that could result in an invalid patent. Our Patents Act requires disclosure sufficient to enable a person skilled in the field to practice the invention. Secondly, you may end up having to rely on that information to distinguish your invention over other inventions, for example during examination. Failure to describe that information fully could prevent you from doing so.
Get Entitlement Sorted Out
It is only the inventor or inventors that are entitled to the grant of a patent in Australia. However, if there is an agreement or other obligation on the inventor/s, such as an employment contract, the entitlement can be vested in another party. Note that this is a factual issue. In other words it is not up to you to decide who is the inventor. See my posts on entitlement for more information.
Agree in writing before the appointment as to who will be entitled to the grant of a patent. That agreement can acknowledge the inventor/s. Your patent attorney should be able to formalise that agreement for you.
Keep it Relevant
Filing a patent application should be a commercial decision. You should be clear on the reasons for wanting to file a patent application. Most inventors I know are emotionally attached to their inventions. This is not necessarily a bad thing. But in my experience, those inventors who have a solid business plan that makes the patent application relevant as an income generator or defensive instrument are always the most successful.