If you are reading this, you have probably had a good idea about a product or a procedure. You have surely thought... “This can be manufactured and it doesn't exist.” Whether it's because you work in the sector or because you have extensive knowledge on the subject, you think your idea has great potential and, as far as you know, there is nothing like it on the market. You have identified a need and figured out how to meet it.
You may ask yourself, “What if I have a potential patent?”
You may have heard of patents: cases such as lollipops and mops have gone down in history as inventions protected by patents in Spain. But what if you could also patent your idea? How do you do it? Where do you start? How do you register a patent?
In this article, we explain the first steps in the process of patenting an invention and protecting it properly.
Let's start at the beginning: what is a patent?
Before going into detail about what you should do, it is important to understand what a patent is. A patent is an exclusive right granted to the inventor of a new product or process, preventing others from manufacturing, distributing, marketing, exporting, or importing that invention without their permission.
We could say that a patent is a kind of contract with the State. If I have come up with an invention that provides a technical and innovative solution to an existing problem, I can apply to the State for a monopoly or exclusive right over it for a certain period of time (a maximum of 20 years); but there is a price to pay: I must publicly disclose what my invention consists of.
Explaining what my invention consists of contributes to technological progress (which justifies the State granting me that temporary monopoly) for two reasons: first, because my competitors will be able to see what I have protected and may come up with a better solution to the problem; and second, because my invention may be developed by my competitors and launched on the market as soon as it falls into the public domain, once my protection period has expired.
It is also important to know that patents are territorial. I can protect my invention, for example, in Spain and the United States, but I cannot prevent it from being manufactured and marketed in other countries.
In other words, the patent protects your idea, but only for a limited time and in the territories where you have applied for and obtained it.
Not every idea can be patented. Your invention must meet certain requirements, including:
- Novelty: the invention must be new, i.e., it must not have been publicly disclosed before applying for the patent, internationally.
- Inventive step: it must not be obvious to an expert in the field. This is the main difference between patents and utility models, which have a maximum term of 10 years (instead of 20). We explain the differences between patents and utility models here. here.
- Industrial application: the invention must be capable of being manufactured or used in some type of industry.
If your idea meets these criteria, the long road to obtaining your patent (a process that can easily take at least two or three years) can begin. But before taking any steps, there is one fundamental thing you must keep in mind: do not disclose your invention.
Do not disclose your invention.
This is the most common mistake made by novice inventors: disclosing their idea before applying for a patent. Don't do it!
Keep your invention secret until you have applied for a patent, or you could risk losing your right to obtain one. Disclosing your invention publicly, whether through social media, in a presentation, or even by sharing it with people outside your circle of trust, could compromise your ability to patent it.
Why is this so important? As we have seen, patent regulations require your invention to be new, and any prior disclosure, to the extent that it can be traced by the Office examiner, could be considered a publication that invalidates the novelty of your invention. This includes disclosures made by the inventor themselves. So it is best to maintain absolute silence about your idea until you have filed the patent application. Only share the details with trusted individuals, professionals with a duty of confidentiality (lawyers, industrial property agents), or under confidentiality agreements.Non-Disclosure Agreements or NDAs).
We explain this in more detail in this post.
Put yourself in the hands of an Industrial Property Agent.
Once you have decided that your idea is good enough to consider applying for a patent, the next step is to seek professional help. This is where the Industrial Property Agent comes in, a specialist in patent registration who will help you navigate the complex application process.
Why is it important to have an agent? Because filing a patent is a very complex task that requires technical knowledge of the sector to which your invention belongs, as well as strategic and legal skills. Registering a patent does not involve depositing a prototype of your invention with the Spanish Patent and Trademark Office (OEPM). Instead, you must draft and file a patent specification: a document that describes in detail what your invention consists of and which aspects of it you want to protect.
The most crucial part of this report are the claims, which are phrases where you specify what you really want to be protected under the patent. Very broad claims, which attempt to cover a lot of protection, run the risk of overlapping with other inventions that have already been disclosed. And very narrow claims could provide insufficient protection, easily circumvented by your competitors. It is therefore absolutely essential that the claims are well drafted.
An Industrial Property Agent will not only help you draft the report correctly, but will also advise you on the best protection strategy for your invention. In Spain, the body responsible for managing patents is the OEPM, but an Industrial Property Agent can guide you both here and in the internationalization of your protection, if you so require.
Assume that the process involves costs.
Applying for a patent is not free. Although the initial costs may not be very high, you should be prepared to incur expenses throughout the process. The main costs involved in a patent include:
- Industrial Property Agent Fees: The professional work involved in drafting and filing a patent application is a highly skilled technical task, which obviously has a cost. In fact, in many cases, the largest part of the costs of applying for a patent is the Agent's fees.
- Application fees: these fees are paid to the patent office (in the case of Spain, to the SPTO) when you file your application.
- State of the Art Report and patent examination fees: the examiner in charge of your file at the SPTO conducts searches on the state of the art (everything disclosed prior to your patent application, at the international level), both in patent and non-patent literature, to determine whether the invention is novel and involves an inventive step. The result of these searches is called the Prior Art Report (IET). Similarly, in the final stage of the process, the examiner decides whether the patent should be granted or refused (in whole or in part). Both actions are subject to the corresponding official fee.
- Iterations with the examiner: it is very common for a patent not to be granted exactly as it was filed. Instead, it is common for the EPO to raise objections to all or some of the claims. These objections can be addressed directly by the applicant (by submitting technical observations in defense of the validity of the affected claims) or they can be accepted, modifying the patent accordingly. In both cases, there is technical work behind the scenes by the agent. It is therefore reasonable to assume that during the patent process, additional costs will be incurred beyond those initially anticipated.
- Maintenance costs: Patents have a limited duration (generally 20 years from the date of application). During this time, you will have to pay annual fees to keep it in force.
It is important to bear in mind that if you decide to extend your patent protection to other countries or regions, these costs can multiply. This is the problem of territoriality of protection, but it is the same for everyone.
Assume that the process may not be successful.
It is also very important to bear in mind that the work of an industrial property agent is a service, not a guarantee of results. An agent can never guarantee that a patent will be granted, just as a lawyer cannot guarantee that you will win a court case.
The patent process is still a legal process (in which a public administration grants, by virtue of the powers conferred upon it, an exclusive right to an interested party). Like any legal process, the outcome does not depend exclusively on one of the parties. The agent can do their job to the best of their ability, but the examiner may raise objections on issues where the agent has a different opinion. The law is not black and white, and neither are the technical aspects of a patent dispute. Ultimately, the decision to grant or deny a patent rests with the examiner (a decision that is, of course, subject to appeal).
If you believe your idea is patentable, don't wait.
If, after reading all of the above, you think your idea could potentially be protected as a patent, don't wait to try.
Keep in mind that what you have thought of could have occurred to anyone else in the world. If that person makes their invention public or applies for a patent before you do, it could hinder your patent process. The state of the art is constantly evolving.
Strategy commonly recommended for Spanish inventors.
If this is your first patent and you have developed your invention in Spain, it is best to start by applying for the patent here. In addition, in accordance with our Patent Law, You are required to file that first application as a Spanish patent or a European patent (for the protection of local inventions, so to speak).
The procedure at the OEPM is relatively affordable compared to offices in other countries, and allows you to initiate protection while you decide whether to expand that protection to other territories.
Before filing a patent application, it is advisable to conduct a preliminary patentability report. In other words, conduct a study on the state of the art to find out what has been disclosed that could describe your invention in whole or in part and could therefore affect its novelty or inventive step.
This patentability report can be done privately, that is, by the agent themselves. The agent will likely achieve the most in-depth results and their searches will be very thorough, but the cost of their work will probably also be relatively high. This is why the Spanish Patent and Trademark Office's Patent Technology Reports (ITP) play an interesting role. You can find more information about them here. here. These are private reports between the applicant and an OEPM examiner, in which the examiner confidentially informs the applicant of the results they have found in the prior art related to a particular invention submitted to them. In our experience, for the ITP to be truly useful, it is advisable to provide the examiner with the patent specification as it will be submitted. In this way, the examiner will not only have complete and accurate information about the invention, but will also be able to give their opinion on other aspects of the specification (possible insufficiency in the description, detection of errors or inconsistencies in concepts, etc.).
But... If we draft the patent report, apply for the ITP, and then it turns out to be unfavorable... We will have wasted time and money on drafting the report, won't we? Yes, that's correct. But we believe that the benefit of being able to present the complete report to the ITP examiner outweighs the risk of the ITP being completely unfavorable (bear in mind that it would have to be so unfavorable that it would completely invalidate any feature of the invention). Furthermore, there are times when even the cost of drafting the report + the ITP application is lower than that of a private patentability report. And, in the worst case scenario, we can always apply for a utility model, whose report is essentially identical (except that it does not have a summary) and which is granted without examination. We will know in our hearts that it is an invalid model, difficult to enforce in a court of law, but the presumption, in the absence of evidence to the contrary, is that it is valid. This can also play a favorable role in terms of marketing for its owner.
If the ITP is favorable, we can begin the patent process, given that the IET will likely be the same as the ITP and the patent is expected to be granted.
In this context, a strategy that we follow quite classically in our office is as follows:
- Draft the complete patent specification, as it would be submitted.
- Apply for a provisional patent by submitting that report. Review your results (the OEPM says it takes about 21 days, but we are more accustomed to a couple of months) and modify the report accordingly, if necessary.
- File the patent in Spain with the SPTO. This will be our first filing.
- From that first filing, we have 12 months to file anywhere else in the world, claiming priority from the Spanish patent application. This is regulated in the Paris Convention for the Protection of Industrial Property. It is normal for us to have the IET in Spain before 12 months, which helps in the decision-making process.
- If, before reaching 12 months, the applicant knows in which countries or regions they want to protect their product and where they have a real or potential market, we can assess protecting it directly in those countries or regions. For example, in the EPO, through the European patent. That's a topic for another post.
- If you don't know or aren't sure, we can apply for an international patent. PCT. This is also a topic for another post, but basically it is a process that allows countries that are part of the PCT (visible here) and not having to decide after 12 months which territories to protect (but rather after 30 or 31 months, depending on the country, from the date of the first filing in Spain).
This is not always the recommended strategy, but it is one that is quite common among Spanish inventors.
Go out and sell.
Let's consider the best-case scenario. You have already been granted your patent in Spain. Very well, now what?
Obtaining a patent is only one step. The protection it gives you is an exclusive right to your invention, but it is very important to understand that it does not guarantee commercial success. To turn your idea into a profitable product, you will have to go to market, develop prototypes, promote your invention, and ultimately make it attractive to consumers or potential investors.
A patent gives you significant added value: a monopoly over your invention in the territory where you have applied for protection. This can make your company more valuable and attractive, but it does not automatically guarantee financial success. You will need to work on marketing and selling your product, and you may require additional investment for its development and manufacture.
Remember that a patent is a strategic tool, not the ultimate goal. The true value of your invention lies in its commercial application and how you bring it to market. At Bamboo.legal, we encourage you to move forward with your project, but with your feet on the ground and a well-planned strategy. If you are looking for an Industrial Property Agent, we would be delighted to help you.
