To Patent or not to Patent?


You consider yourself an inventor; you have made improvements on existing inventions, for example, on a product with better performance or a process that allows a cheaper or more efficient production of a known product. Then you should consider protecting such invention, and most importantly, you must consider determining where you want to protect such invention.

It’s important to be aware that your patent right is territorial. Your exclusive rights are only applicable in the country or region in which a patent has been filed and granted. Therefore, not only is it always recommendable to file a patent application before publicly disclosing the details of the invention, but to determine in which countries you want protection of such invention.

The reason being because in most countries any invention which is made public before an application is filed would be considered prior art, losing the characteristic of novelty since information of such invention has been made available to the public anywhere in the world by written or oral disclosure before the filing date.  Some countries, however, allow for a grace period or grant certain priorities, usually between 6 to 12 months, which provides a safeguard for applicants who disclosed their inventions before filing a patent application or once they have filed elsewhere a patent application. In Chile, this priority period is of 1 year since the date of the application elsewhere.

For any resident or national of a Contracting State of the WIPO-administered Patent Cooperation Treaty (PCT), a good way to secure your patent rights, and not have to worry about grace periods, priorities or prior art considerations, is by filing an international application under the PCT.

This single patent application has the same effect as national applications filed in each designated Contracting State of the PCT, and the date of application before WIPO is considered as the date for all designated country, thus avoiding losing the novelty of your invention because you filed it here and forgot to file it elsewhere.

Harris Gomez Group advises our clients to look at the markets where the product could potentially be used in order to understand where you need to focus your attention. Once you have an idea of your target markets, you can understand which countries are covered by the WIPO-administered Patent Cooperation Treaty and which countries need to be individually applied to. You may not be ready to export to those specific markets but at least you know your idea is protected for when are.




Andrea Dawson started her career working in Switzerland at the World Intellectual Property Organization, Arbitration and Mediation Center, as a Case Manager in the resolution of domain name disputes, among other matters.

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