Have you invented a potentially valuable technology and don’t know how to proceed? Here we give you the basic DOs and DON’Ts:

1. Do not public your inventions before filling patent application form

Disclosing an invention in a diploma or PhD thesis or a research paper means losing its novelty. The invention becomes part of ‘prior art’ and it is no longer patentable. If you are about to publish your invention, consider filing a patent or utility model application first.

2. Do not rely on secrecy

If you don’t file a patent application and only keep your invention secret, your competition may independently come up with the same idea, patent it and effectively block your way to the market.

3. Copyright does not apply to the principle of inventions

If you’re considering publishing your invention, bear in mind that a copyright protects only literary work (against unlawful copying), but does not cover the principles of the invention itself. It will not be possible to prevent the use of the invention in a product and the publication will also bar the invention from being patented.

4. Until you would have application form filled do not promote youe invention to anyone interested

If you introduce a patentable product (e.g. by exhibiting an invention prototype at a trade show or showing it to a prospective customer without signing a non-disclosure agreement) without obtaining proper protection for it, this “disclosure” will also result in the loss of novelty and the invention will become available for use by third parties.

5. Do not rely on grace period

If you intend to protect your invention abroad, you shouldn’t rely on the “grace period”, i.e. a period protecting the inventor from a publication of the invention before the filing date. This period does not exist in many jurisdictions.

6. You have to decide about protection within a year

Within 12 months of the date of filing (“priority”) at the Industrial Property Office, an application abroad can be filed. The examination of the patent at the foreign patent office will take into account only the prior art created before the date of the first filing in the Czech Republic (“the priority filing”). Any patent application for the same invention filed after that date by another inventor will not endanger your patent being granted. After this period, it is very complicated to obtain protection abroad; if the invention has been disclosed in the meantime, it becomes almost impossible. Czech universities usually do not have the necessary financial means to file patents abroad, so the question of which countries to apply in will rest with the industrial partners of the university. Generally, patent protection makes sense in the countries and regions where the company intends to produce or export its products, and in countries in which it wants to exclude competition from the market.

7. Leave a compilation of application form to patent attorney

Consider whether you have enough experience to go through the patent procedure yourself, or if you need the services of a patent attorney.

8. Undertake a patent search before filling of application form

Before filing a patent application, it is advisable to undertake a patent search. You can use the online database of the Industrial Property Office or the database of the European Patent Office, Espacenet.

9. Do not forget to request full examination

Within 36 months of filing at the Industrial Property Office, a request for examination must be filed. The examination usually takes 2 years. The time period between filing and the granting of a patent is usually 3-5 years or longer.

10. Be aware of IPR in joint projects

In collaborative research projects, any of the partners can become a co-inventor and co-owner of the resulting inventions. A typical example of this is the joint research projects of the Academy of Sciences and Czech universities. A company commissioned to build a prototype can also become a co-inventor by the virtue of investing its inventive effort into making the product. It is therefore critical to deal with the IPR issues before you start the collaboration to prevent possible problems in the future. It is also advisable to have an agreement on the distribution of income long before there is any received.

11. Apply for patent in Czech Republic primarily

You may have come across the notion that patenting in the Czech Republic is counterproductive, because it means giving your IP away. This is, however, true for all countries except the United States and Japan, where most of the income from patents can be realized in the home country. In Europe, international protection is crucial whenever IP seems to have a commercial value. Filing a patent application in the Czech Republic will give you the 12-month priority, during which you can seek out commercial partners willing to take on your technology and protect it internationally. If you think that your invention is not of international importance, you can always use your Czech patent to open doors at Czech firms.

12. Leave a commercialitation to professionals

If you aim to commercialize your invention or technology, don’t hesitate to contact a technology transfer office. A technology transfer manager will guide you through the whole process, from the initial evaluation and protection of your IP to its marketing and the signing of an option or license agreement with a commercial partner.

Quotated from www.3pod.cz