What is Intellectual Property? > Patents > Considerations before applying for a patent

Considerations before applying for a patent

1. Basic of patent

You should first make yourself familiar with some basic patent law and principles in order to have some ideas as to what patent is and whether your invention is patentable. You may find some FAQs related to patents here: http://www.ipd.gov.hk/eng/faq/patents.htm

2. Prior art search

A patentable invention must be new. You should conduct a prior art search to make sure your invention fulfill this requirement. You may go to http://ipsearch.ipd.gov.hk/patent/index.html and click "About Patent Search" for further details.

3. Self assessment

You may want to assess carefully if your invention is worth patenting. Here are some considerations you may like to think about:

• Costs of patent application

• Commercial worth of my invention

• Financial and licensing issues

• Time and effort in pursuing patent application and protection

• Complexity of patent and lack of knowledge and experience in theis area

• IP protection strategy

4. Specification

Among all the forms and documents needed in the process of a patent application, the Specification should be the most complex and important one. A patent specification includes the following sections:

• "Description" of your invention which describes the invention and explains a technical problem that your invention solves, and what it does.

• "Drawings" which illustrates the features of your invention.

• "Claims" which are the precise statements of technical features of the invention that you want to protect.

• "Abstract" which concisely summarizes all the important aspects of your invention.

For example of a patent specification, you may go to http://ipsearch.ipd.gov.hk/patent/index.html to look at some samples of the specification. Here is an example to search for the specifications of inventions related to “thermometer”, you may go to the patent online search system. Then, you may enter “thermometer” in title of invention to search for the inventions which are related to “thermometer”. The specification can be viewed by clicking the title of invention in the search result list.

Since the specification is an important and a legal document , you are advised to seek professional help which has the necessary technical and legal skills to prepare the specification.

You may find some professional bodies here:

• Asian Patent Attorneys Association Hong Kong Group (APAA) at http://www.ipd.gov.hk/eng/links/apaa.htm

• The Hong Kong Institute of Trade Mark Practitioners (HKITMP) at http://www.hkitmp.org/

• The Law Society of Hong Kong at http://www.hklawsoc.org.hk/pub_e/default.asp