Dos and don’ts

Do

• Seriously consider Iptica to file provisional patents easily and affordably. Also see our provisional patent drafting and filing guide.
• Ensure that intellectual property (IP) developed by contractors is assigned to you in writing
• Conduct a patent search through freely available internet databases before filing any application
• Ensure that any patent application cites all inventors that contributed features mentioned in the claims / features to be claimed in the complete application
• File a provisional patent application first if you foresee making improvements / modifications to the invention during the coming year or if you intend to file patents in more than three foreign territories
• Ensure that your provisional patent specification includes proper drawings (without dimensions)
• Set out your patent filing strategy at an early stage to ensure sufficient cash flow, when required
• When considering your IP filing strategy, consider the acts that you wish to prevent people from performing – making, using, disposing (including offering to dispose), exercising (a method) and importing – focus on territories where the patented product can be made or imported/used
• Mark your product with your trademark/design/patent number(s), once registered. This will enable you to claim damages for infringement
• File corresponding patent applications in foreign countries or a PCT patent application within 12 months of filing your first patent application (typically your provisional patent application from which you claim priority)
• File corresponding design applications in foreign countries within 6 months of filing your first design application
• File a PCT application if you intend to file patents in more than three foreign territories, but ensure that you simultaneously file applications in non-PCT member countries
• Consider tax and exchange control issues when assigning intellectual property
• Consider protecting not only the product but also the method of making the product, the method of using the product and the machinery to manufacture the product

Don’t

• Disclose your invention to anyone before filing a patent application, unless such disclosures are subject to confidentiality undertakings. Also see SuperNDA
• File designs no more than 6 months following any public disclosure
• Use “puffery” in your patent specification or claim that your invention solves various problems. A patent is not a marketing document
• File functional design applications for spare parts
• Make a profitable sale using your invention before filing a patent application
• Post-date your provisional patent application if you intend to file corresponding patents in foreign countries
• Re-file your provisional patent application if the invention has been disclosed to the public in the interim. And, if you do re-file your provisional patent application, consider first abandoning your original application
• Institute infringement proceedings in respect of your South African patent until 9 months following grant
• Threaten anyone with your granted patent / design without first sending a polite, non-threatening letter informing the person of your patent / design, citing your patent / design number and attaching a copy of your patent / design
• File a patent / design in the name of two or more applicants unless the applicants have concluded a joint ownership agreement
• File patent applications for business methods, methods of playing a game, methods of performing a mental step, scientific theories; or mathematical methods. Obtain professional advice if you wish to patent a computer program
• Grant an exclusive licence without appropriate escape clauses or minimum royalty provisions

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