a patent (see ‘info’ box below). Furthermore, NDAs do not provide a safeguard against future entitlement disputes unless the technology being exchanged between parties, particularly during early stages of negotiations, is clearly identified and well-documented.

Do: keep signed and dated records of your technology. This can simply be done by using workbooks in which each page is initialled and dated.

Don’t: attend a meeting with a third party to discuss new ideas without formally documenting your ideas beforehand and, if possible, during the meeting unless necessary safeguards have been put in place.


disclosures, such as a product test or conflicting filings by competitors increases significantly.

Consideration should also be given to the cost of filing patent applications. Not just initial filing costs, but costs associated with maintaining and extending patent protection overseas which are often more than the cost of the original filings.

In some circumstances, filing of patent applications can be deferred in order to remit costs. Filing of an application should, however, only be deferred where the risks have been properly understood. Even if deferred, applicants should not be filed ‘last minute’. Rushed patent applications filed immediately before a discussion with an investor, developer, test or even a product launch (as often happens) tend to result in weak patents, since the applications may have been prepared without a proper understanding of the technology involved.

Do: seek advice early. This can be a short (usually free) meeting with an intellectual property advisor (e.g. a patent attorney) to set dates or project milestones (such as proof of concept or construction of first working prototypes) at which patent applications should be decided upon. Build these into your project plan!

Don’t: leave patent filings to the last-minute and expect a patent application drafted a few days before a meeting with a client/investor/ licensee to protect your technology properly.

NON-DISCLOSURE AGREEMENTS The risk of prejudicial disclosures can be reduced by using Non-Disclosure Agreements (NDAs) when dealing with third parties such as suppliers, clients or potential investors. NDAs, however, do not provide absolute protection since an unlawful disclosure (whether deliberate or unintentional) can still invalidate

A patent application must be filed within six months of an unlawful disclosure (even when the disclosure is accidental or the person making the disclosure is unaware that it is unlawful) otherwise any patent obtained subsequently may be invalid.

QUALITY Don’t skimp on drafting costs/quality. There is no substitute for a patent which is prepared well to begin with. Patents in which the applicant/inventor has prepared most of the text rarely make good patents and often prove to be a false economy in the longer term. Using a patent attorney who has particular experience in dealing with your technology is essential. In fact, the more your attorney understands your technology, the better (and usually cheaper) the patent application can be drafted in the first place.

Also, a well-drafted patent application prosecuted by an attorney who understands your technology is likely to be easier and quicker to get granted and any patent that you obtain is likely to be broader and stronger than 9

Page 1  |  Page 2  |  Page 3  |  Page 4  |  Page 5  |  Page 6  |  Page 7  |  Page 8  |  Page 9  |  Page 10  |  Page 11  |  Page 12  |  Page 13  |  Page 14  |  Page 15  |  Page 16  |  Page 17  |  Page 18  |  Page 19  |  Page 20  |  Page 21  |  Page 22  |  Page 23  |  Page 24  |  Page 25  |  Page 26  |  Page 27  |  Page 28  |  Page 29