Main Advantages and Why You Should Use an Official Industrial Property Agency to Protect Your Invention

A patent is a valuable asset that grants you the exclusive right to use and commercialize your technological innovations in the market, thereby protecting your invention against competitors.

To understand the complexity of the patent right, we must know that it is a title granted by the State (through an Office in each country or territory where it is applied for) to exploit an invention exclusively for a determined period, generally a maximum of 20 years. In exchange, certain obligations and conditions must be met:

1. Patentability Examination: your invention will be examined as to its novelty (which must be absolute worldwide), inventive step (it must not be obvious to an expert), utility in any industrial field, and descriptive sufficiency of its content. This process will determine whether it is considered patentable or not.

2. Public Dissemination: The new technology for which protection is claimed is disseminated and becomes fully accessible to third parties through its publication in an official Gazette or Bulletin.

3. Payment of Fees: This involves the payment of official fees for the application, search, and substantive examination, as well as maintenance fees, which are usually annual and increase every year. The purpose of the latter is to encourage the release of the technology for its free commercialization, and it is crucial to pay them within specific deadlines.

4. Internationalization: If you wish to protect your patent in other countries, you must do so within a strict and non-extendable term: within one year from the date of the first application (priority).

While it is of great importance to have the assistance of an industrial property agent for the registration of a trademark, for the protection of an invention (patent or utility model), it is practically essential. If you decide not to be guided by an expert agent, an inexperienced inventor in this field could face undesired and even catastrophic results from the protection and procedural point of view, due to the complex requirements and other reasons:

• Prior Patent Search: An agent will recommend a pre-application search. Although non-binding, this search will not only provide adequate guidance on the prior art and analogies of the proposed patent, but will also allow an assessment of its potential future viability. It is much easier to draft a descriptive report with a good basis from the outset than to modify it later, since it is not allowed to introduce “new matter” after filing.
• Drafting of the Descriptive Memory: The agent will be in charge of drafting the different sections of the descriptive memory, making sure that the content is oriented to maximize the protection of the invention and to minimize possible objections or inconsistencies, before adapting it to the format required by the Patent Office. Special emphasis will be placed on the correct expression of the “claims”, since it is there that the protection of the patent mainly lies.
• Official Filing of the Application: The agent will manage the official filing of the application in Spain (SPTO), Europe (EPO), at international level (PCT-WIPO) or other territories, depending on the holder’s intentions, the markets in which he wishes to protect his invention and the nature of the invention (invention patent or utility model).
• Attention and Defense before Official Actions: Official actions are common, either due to a lack of clarity or precision in certain sections of the descriptive memory or its claims. Objections or negative opinions may also arise, which, although initially unfavorable, may be corrected, as well as eventual opposition from third parties that could be overcome using an adequate technical and legal response. The agent will be responsible for reviewing and adjusting the documentation or arguing its validity against the background cited in the search reports or during substantive examination phases.
• Adequate Technical Translations: The agent will ensure that the technical translations into the languages of the national patent Offices are adequate, since a poor translation may result in a loss of patent protection.
• Notices and Reminders of Deadlines: You will receive notices and reminders of both the deadlines during the process, such as responses to requirements or submission of documents, and those necessary to maintain the validity of your patent through the payment of annuities, thus avoiding surcharges or loss of rights.

For all these reasons, it is highly recommended, almost necessary, to apply for patent protection to obtain an exclusive right of use. It is the most effective protection against infringement and unfair competition. A commercially successful invention patent will inevitably attract other competitors, so once protected, you will be able to exploit it with the peace of mind of not being claimed by third parties. In addition, the law will empower you to prevent others from using your invention and exploiting it.

Those who have a simplistic opinion and believe that the patent procedure is a trivial one, that it is just a matter of searching the Internet to see if the novelty exists and protecting it at the Patent Office without any need for advice, are usually mistaken. In most cases, the patent application process can become complicated, involving serious challenges, strict deadlines, and complex or confusing procedures for inexperienced people. This could lead to future inconveniences or legal consequences, such as reduction or even loss of protection, if certain relevant and foreseeable aspects are not contemplated or omitted from the outset.

Just as we go to a doctor for a health problem, for matters related to patent registration, it is logical to turn to a trustworthy agency that has an engineer to draft the descriptive memory and an industrial property agent to represent you. They are the experts in these matters. An official (registered) industrial property agent can represent you and offer you several advantages if you decide to use the services of their specialized team, considering their experience and the value-added services they offer on patents, as they know the applicable legislation, practices and criteria to be followed in the examination procedures by the Patent Offices (SPTO, EPO, WIPO…).

In the field of patents, as in other sectors, there are quality professionals. However, some IT companies offer “quick and easy” patent drafting and filing services, with derisory prices that do not allow for the necessary field work of an expert engineer. This can result in a service without the necessary added value, as time and expertise are required to ensure maximum validity of patent protection. As is often said in marketing, “If you don’t pay for it or it’s too cheap, then the product is you.” Quality service involves follow-up, preliminary study, and continuous provision of updated information. The expert professionals of an industrial property agency will be important allies in the defense of your patent interests, whether you are an individual inventor or a large company.

In the following, we will focus on the great advantages you can benefit from being assisted by a reliable agency when planning to file your patent:

Patent Strategy Planning, through a fluent dialogue with the applicant, the agent, and his team, will be a decisive help to avoid foreseeable mistakes from the very beginning, before the filing of the application. They will assess different aspects:

• Preliminary Patentability Search: They will perform an exhaustive search in the documentary collections of the available world Patent Offices to determine the novelty of your invention. This will help you to know if your patent is viable or if there is any prior art that could compromise the procedure. A good search will save you time, costs, and unnecessary efforts, besides offering you a feasibility perspective.
• Preparation of the Descriptive Memory: They will draft the descriptive memory with its different sections and claims, arguing how the new invention improves the different prior art inventions that seek to solve the same technical problem, usually arguing such advantages based on previous patents found during a previous search.
• Filing the Application: They will determine the best way to apply according to the projection of your invention and the countries where you plan to commercialize and protect your patent. If the search reveals risks, the agency will propose alternatives, such as opting for a utility model (which requires less inventive step) or even discarding protection if it is foreseeable that the patent will be rejected.
• Definition of “What, How, When, and Where to Protect”: They will analyze the degree of novelty, obviousness, and utility of your patent (if it contains patentable subject matter and does not incur absolute prohibitions). They will advise you on the territories of protection according to your needs and budget, and the applications of the patent to any industrial field. The objective is to obtain the broadest possible protection for your innovations, including a correct expression of the claims, which must be drafted with the utmost care and attention to avoid errors or omissions that may prejudice the validity of your industrial property rights in the future.

It is important to note that, although Patent Offices may offer basic assistance to the applicant, as they are regulatory and examination bodies, they DO NOT PROVIDE ANY TECHNICAL OR LEGAL ADVICE TO THE USER. Therefore, they will not analyze in depth or in a personalized way the patent to be protected, nor the risks that, on the other hand, could be easily foreseeable by an agent.

The Offices will examine the form and formalities of the patent once it has been filed. Subsequently, a substantive examination of the patent will be carried out to verify whether it meets the patentability requirements (novelty, inventive step, and industrial application). Finally, they will publish it in their respective Official Gazette for possible opposition by third parties within a fixed term. After this period, they will issue the suspension agreement if there are incidents, notifying the applicant of the reasons and the deadlines to remedy the defects or objections, or to respond to an opposition formulated by a third party.

With the official filing of the patent application, the right of priority begins, assigning a number, date, hour, and minute of filing. However, this application is a provisional right and must follow a complete process before the Patent Office until it becomes a full right and is exercised as a “Patent”.

Follow-up of the Procedure until the Final Resolution

The agent will inform you of any official communication from the Patent Office, will send you publications and notices of all important deadlines, and will give you preliminary advice on each step to follow in case of objections from the examiner. If your patent is suspended due to formalities defects or if a relevant prior patent is cited, the agent will study the reasons, amend the specification, or reply with the necessary allegations to defend your patent. All this to achieve the patent grant and a solid, effective, and unrestricted protection. Although an agent can make a good prognosis, he can never guarantee success with absolute certainty, just as a doctor cannot guarantee the cure of a disease.

In addition, your official agency will give you ample notice, including reminders, of the term of your patent’s next annuity. Patents have a maximum term of 20 years (10 years for utility models) from the date of application, and upon expiration they become part of the public domain. You will also be informed about the obligation to exploit the patent, as well as the period and situations in which you may have to prove its use.

Other Patent-Related Matters Your Agency Can Handle

Your agency will be able to handle:

• The registration of licenses of use, name changes, and transfers of ownership, ensuring that the rightful owner has full control over the ownership of the right.
• Legal assistance for the defense of your rights in litigation and patent infringement proceedings, either as plaintiff or defendant, before the Spanish or European Courts. Some agencies can also represent you and work to avoid potential conflicts with third parties or mitigate them, seeking amicable agreements.
• The preparation of injunctions to third parties to cease infringing use (without your consent) or to act against acts of unfair patent competition.

Quality and Confidentiality Guarantees

• Quality Guarantees: An official registered agent is the only professional who offers guarantees of quality and professionalism in advice, knowledge of the laws in force, his proposals, and the execution of actions (although he will not guarantee success). He will treat each patent matter with the utmost diligence, with the appropriate means and infrastructure, and with due confidentiality. To ensure this, the agent is obliged to take out liability insurance.
• Confidentiality: By resorting to an official agency, you can rest assured that you will be treated with confidentiality. Their bylaws, both those of the Association of Agents and those of the Bar Association, oblige the agent and his team to keep strictly confidential any information provided by the client, using it only to prepare a recommended technical protection proposal or an opinion on the feasibility of the patent.

Should you require further information on this matter, please contact ABECSA and we will answer any questions you may have.