Practical tips for your patent application

Anina Groh
Anina Groh
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If something new has been developed in your company in a technical field and you want to apply for a patent, there are several aspects to consider. In this blog post you will find important practical tips for your patent application.

Patent search

The first step is to conduct a patent search. Depending on how well you are familiar with the technical aspects of the planned application, it is advisable to invest a lot of time here. First of all, you can carry out a free search via various online portals. You can find an overview of these portals here: https://www.ige.ch/de/uebersicht-dienstleistungen/recherchen/patentrecherchen/selbst-recherchieren.html

After that, it is generally recommended to conduct an accompanied search at the Institute of Intellectual Property in Bern (IGE) or a partner of the IGE. In an accompanied search, you will be accompanied by an expert in the relevant field in the screening of existing patent applications. You can find information on accompanied searches here: https://www.ige.ch/de/uebersicht-dienstleistungen/recherchen/patentrecherchen/begleitete-recherchen.html

In both searches it is important to think very carefully about the keywords for searching for existing patents. A search is only as good as the selected keywords. Even if this may sound banal, it is an essential factor for a well-founded search and thus a successful patent application.

No publication

Already during the work on a new technology and especially when it is precisely defined, it is essential that the findings are not published. This means that the findings must not be shown to a small circle in a lecture or published on a poster at a scientific event, and even less so in a scientific publication (paper), before the patent is filed.

This too may seem trivial, but especially when collaborating with academic partners (technical universities), it must be remembered that publications have a high value in science and therefore the timing of patent application and scientific publications must be carefully coordinated.

Technical aspect: good patent application

If the result of your search was good, i.e. your invention has not already been applied for a patent, you can start writing the patent application. The involvement of a patent attorney is essential. It is important that you choose a patent attorney in the right specialist field. The specialized expertise in the corresponding field is particularly important for the good drafting of the claims in your patent application. It is also essential that you or the technical staff of your company who made the invention take the time to work on the text of the patent application.

Legal aspect: Owner of the patent

The most important legal aspect of a patent application is who owns the patent (so-called ownership). The inventor and the owner need not be the same person. An employed person of a company usually cedes the invention to the employer within the scope of the employment relationship. Accordingly, the patent specification must then list the employee as inventor and the employer as owner.

Particular attention must be paid to the aspect of correct ownership, especially in the case of jointly developed patents. As soon as an invention has not been made purely within your company, but in a collaboration, e.g. with an industrial partner, it must be clarified exactly who the patent owners are.

Local aspect: Where to apply and where to extend

The first patent application is the so-called priority application. The date of this application is the priority date of all further patent applications in other countries based on it. If it is planned to maintain the patent internationally in different countries later on, it is usually advisable to file a so-called "PCT application", which covers (almost) all countries. If it is already clear from the beginning that protection is sought only for one or a few countries, an application can also be filed only in a certain country.

The fact that different countries have different examination standards must also be taken into account when considering where to file an application. Depending on the situation, it may be preferable that a patent is examined very closely by the examining authority from the outset, or this may not be exactly what is desired.

The aspects mentioned in this paper obviously do not fully cover the breadth of relevant considerations for patent applications. They are intended to serve as food for thought and a basis for considerations for a patent application.

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