Providing Professional Pre-filing Advices and Comments
Drafting and Translating Patent Specifications
Filing Patent Applications
Providing Professional Advices and Comments to the Official Actions and Examination Reports
Handling Arguments to the Official Actions and Examination Reports
Recordal Changes and Assignment of Patents
Monitoring Patent Infringements
Handling Patent Maintenance and Renewals
What is a Patent?
A patent protects your invention by giving you, the patent owner, a legal right to prevent others from manufacturing, using, selling, or importing your patented invention.
Why Register Patent before Launch/Disclosure.
Novelty is one of the necessary conditions for granting a patent.
If something is known to the public, it is not a novel invention and non-patentable. For example, where the innovation is a product which has already been sold, or a process that has already been used, this prior use/disclosure will disqualify the innovation from being patentable.
It is therefore critical to ensure that there is no disclosure of an innovation before making a patent application therefor, or alternatively, any prior disclosure of an innovation should be protected by a confidentiality agreement, so as to preserve the novelty of the innovation.
The “newness” (novelty) of an innovation is assessed as at the date that you file your application for the patent, or a priority filing date lawfully claimed in your application.
Types of Patents
Basically, most of patent systems in the world classify patents into "invention patents" and "utility model patents", based on the number of years of protection and/or whether substantive examination is conducted. However, both of these two types of patents protect the function or operation of a product.
In general, the maximum period of protection for invention patents is 20 years, and substantive examination must be conducted. But utility model patents provide protection for a maximum period of 10 years and usually do not require substantive examination be conducted.
Once a patent is registered, the owner will enjoy an exclusive right of the patent and protected by law. Without your consent/license, any company and/or individual that uses the design and/or operation method claimed by the registered patent for business purposes is a tort, and the owner can take legal action to require the infringer to stop the infringement and even compensate the economic loss.
Patent rights are strictly regional, and registered patents are only legally protected in the jurisdictions where they are registered. Hence, patents registered with the patent registries of other jurisdictions do not automatically receive protection in Australia. In order to obtain protection of a patent in Australia, you must register it in Australia.
What is an International Patent Application?
A patent application filed under the Patent Cooperation Treaty (PCT) is called an international patent application, or PCT application. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states.
First of all, "international patents" do not exist, but why there are "international patent applications"? While national of Members of PCT wishes to apply for patent protection in one or more members of PCT, a single filing of a PCT application can be made with a Receiving Office (RO) in one language, according to the regulations of the PCT. Although, this submission is considered as having already established a filing date to all the members of the PCT, but you are still required to enter the national or regional phases in each of the members to proceed towards grant of patents.
China is one of the PCT member, the States Intellectual Property Office of the PRC (SIPO) is one of the designated offices, and Chinese is one of the designated languages of the treaty. Hence, Chinese applicants (including applicants from Hong Kong, Macao, and Taiwan) could submit "international patent applications" in Chinese in the SIPO.
Note that, this procedure mainly simplified the application stage, but it does not include substantive examination and grant stages. In another words, "international patent applications" do not grant protection to all the jurisdictions in the world.
An international patent application is divided into two phases, international and national. The international phase including acknowledgment, publication, search and preliminary examination of an international patent application; the national phase including designation of an international patent application to the designated offices of the PCT members, substantive examination, grant and other related matters in the designed countries.
The advantage of PCT application is that it can greatly speed up the approval of the same patent in different jurisdictions, and extend the "priority period" to entry into the members of the PCT.
Documents required for Registration
The Applicant's name and address.
The applicant's identity document, i.e. identity proof or passport of an individual, and Business Registration or Certificate of Incorporation of a company.
The Inventors' name and address.
Name, details, specification and/or drawings of the patent.
Signed Power of Attorney is required in some jurisdictions; and notarized and/or legalization may also be required.
Strategies that you may take, to protect your own patents: -
Register the patents in different jurisdictions, especially in those covered by your business.
As most of governments provide policy assistance on patents. You can find suitable official funding based on the nationality/location of the applicant. If the applicant is a Hong Kong resident or Hong Kong company that has never applied for a patent, he/she could apply for a patent funding plan provided by the Hong Kong government.
As a general principle, an employer owns the IP created by its employees in the course of their employment. It is prudent however to address this matter of ownership in an employment contract, as well as other customary IP related provisions: -
- that the IP in work created by an employee in the course of employment is owned by the employer;
- that the employee will sign all documents that the employer requires to record the employer’s ownership of the IP in work created by the employee, including after the employment relationship has ended;
- that the employee will keep in confidence all the employer’s confidential information, including the IP, as well as trade secrets and know how, and will not misuse that confidential information, including the IP, trade secrets and know how.