Do you think you have a good idea for a product or a manufacturing process? Have you tested it? Have you invested any money in developing a prototype? Do you see that your idea works? Do you want to try to protect it?
DON'T MAKE IT PUBLIC! First consult with an expert patent attorney or industrial property agent., who can advise you on whether your invention can be protected as patent or as utility model (If you do not know the difference between a patent and a utility model, we recommend that you read this post; and you can also see our Frequently Asked Questions).
Why should I not publish anything about my invention before patenting it?
Publishing information about an invention before patenting it is a mistake made by many entrepreneurs and developers of inventions who are unfamiliar with industry regulations, especially when they are in urgent need of funding, and it could be a huge mistake, to the point of being able to destroy the patentability of the invention and cause it to fall into the public domain.
The current Law 24/2015, on Patents (as well as the previous one, the Law 11/1986), establishes that there are three main requirements that every invention must meet in order to be patentable: an invention must be new; must have inventive activity; and must have industrial application.
We will not go into detail here about industrial applicability, which simply means that the invention covered by the patent application must be manufacturable or usable in any kind of industry. We will focus on the requirements of novelty and inventive step, providing a few simple guidelines.
What is novelty in a patent?
Our law (in Article 6) states that it is considered that An invention is new “when it is not included in the prior art.”.
Well, what is the “state of the art”?
The state of the art is “everything that has been done prior to the filing date of the patent application." accessible to the public in Spain or abroad by a written or oral description, by use, or by any other means.” In other words, everything that existed publicly prior to the filing of the patent application. Note also that the article does not limit the territorial scope to the place where the patent application was filed, but rather everyone: “...in Spain or abroad”.
This means that if my invention has already been published in Argentina (for example), even if its owner does not have rights here, I will not be able to patent it in Spain..
Article 6.3 goes on to define the state of the art, including Spanish patent applications and European and international PCT patent applications (in this post Regarding the conflict between Thermomix and Lidl, we explain what a European patent is) that would take effect in Spain, whose filing date is prior to the filing date of our patent. In other words, there may even be a patent application in Spain that is identical to our subsequent application, which constitutes prior art, and which we were unable to notice at the time of our application (because the first one had not yet been published). These applications, however, do not affect the inventive step, which we explain below.
What is inventive step in a patent?
According to Article 8 of the law, an invention has inventive activity if “is not obvious to an expert in the field from the prior art”Unlike novelty, here we are no longer talking about identity between inventions, but rather about the conclusion we have reached with our invention, in light of the existing state of the art and normal technological progress., is obvious to an expert in the field, so our invention does not have sufficient inventive step.
The assessment of inventive step is much more complex than that of novelty, as it inevitably gives rise to a certain degree of subjectivity in the analysis, since it is an expert (who is still a person, or several people) who must determine whether the invention presented is obvious or not. As a result, the European Patent Office (EPO) defined a framework for examination under the method known as “problem-and-solution approach” which aims to limit or eliminate the subjective component in the analysis of inventive step. If you are interested and know English, French, or German, you can obtain further information. here.
Does it make any difference if the inventor himself is the one publishing?
From all of the above, it can be seen that The law also does not limit the state of the art to disclosures or publications made by persons other than the inventor or applicant..
That is, if the inventor or applicant, prior to filing a patent application with the competent registry, makes their invention accessible to the public through a written or oral description (e.g., a lecture, a blog post, or a video uploaded to YouTube), through use (provided it is public), or through any other means of disclosure, it is the inventor himself who will be introducing his own invention into the state of the art, thus potentially hindering novelty and/or inventive step of this if the examiner in charge of your file (or any interested third party) notices this previous publication.
It is true that the law includes two harmless disclosures (in Article 7), so called because they do not affect novelty or inventive step (disclosures made by a third party in obvious abuse of the applicant and disclosures made at official exhibitions), provided that the patent is applied for within six months, but the truth is that these cases (especially those involving official exhibitions) are minor compared to cases in which it is the inventor himself who discloses his invention in advance (and mistakenly).
Therefore, if you want to patent an invention, consult with a specialist beforehand who will evaluate your invention and explain the steps to take; and, if the invention appears to be patentable, will recommend that you obtain at least a filing date for the patent or utility model in question before beginning to disseminate the invention.
If you believe your invention is patentable, please do not disclose or publish it until you are sure of what you are doing..
At Bamboo, we are experienced patent attorneys and industrial property agents. You can find more information about our services here, or write to us at info@bamboo.legal or through our contact form.
