Patent filing on a budget
You’ve got a great invention that you don’t want anyone else to copy without your permission. So what do you do? One possibility is to file a patent application. If you are looking to protect your invention on a budget these are the best things to keep in mind. I’ve broken it down in the classic, if slightly re-jigged, who/what/where/when/why format.
Patents are granted for technical inventions that are different from, and non-obvious over, existing inventions. Having a granted patent will allow the patent owner to stop competitors from working the patented invention. Patents and patent applications can be licensed to allow third parties to work your invention for a fee.
You can obtain patents for pretty much all technical inventions, but your invention will need to be new (different from existing inventions) and inventive (non-obvious). Your patent attorney will help you identify the inventions that you have made, and they will write a patent application that protects those inventions in as broad a manner as possible. Make sure you give your patent attorney all of the information upfront – your patent attorney is technically qualified as well as legally qualified, so they should be able to understand how your invention works. It’s nearly always better to have too much information than too little.
Your patent attorney will ask you to review the patent application. Some of the language of the patent application may appear to be strange; this is because patents have their own particular language and structure, and because your patent attorney will try to capture your invention in as functional a way as possible. Despite the dry and sometimes repetitive language, try to engage with the patent application and your patent attorney; they need your input to ensure that they get it right. If you have the time yourself, then you can keep costs down by writing quite a lot of the experimental descriptions yourself. That way, the patent attorney’s time can be focused on the more specialised parts: the claims, the preferred features and the explanation of the inventive step.
As mentioned above, in order to get a granted patent your invention will need to be new and non-obvious over existing inventions. You should therefore do some searching to see if your invention has been made before. You can use Google Patent and Espacenet to look for earlier patent disclosures. Searching is difficult and prone to error, and therefore it may also be worth engaging a specialist searching organisation to do a search for you. This will cost money, but may be money well spent.
When your patent attorney files your patent application, they should ask the Patent Office to perform a search on the application. This will cost money but is a great value way of obtaining a search to see if your invention has been made before. The UK IPO search fee is very good value at just £150.
Also, avoid throwing good money after bad. If it looks, in the light of the IPO search report, like you are not going to get a granted patent, or the patent is likely to be too narrow for your commercial needs, then don’t be afraid to allow the patent application to lapse.
Patents are territorial rights i.e. they are limited to particular countries. A German patent is not effective in France, for example. Patents are rights that enable you to stop third parties from working your patented invention. Therefore, you should decide which territories are important to you (for example, where you make and sell your goods, and possibly where your competitors make and sell their goods). It goes without saying that you should consider whether filing in a particular territory is commercially sensible. Obtaining patent protection in certain countries (for example, Japan and the Middle East) can be expensive, and therefore it may not be commercially sensible to file applications there.
You don’t have to file in all countries at once. People usually file a first application in one country (let’s say the United Kingdom). Once a first application has been filed you have a year to file in other countries (it’s usual to file in other countries close to the year deadline). Many people use an International patent application to give them protection in lots of countries. This does not lead to a granted International patent, but can be considered to be a basket of national patent applications. Filing an International application effectively defers for about 18 months the decision as to the countries in which you want patent protection. The International patent application is then converted into national patent applications in those countries in which you want to obtain patent protection. By that time, it should be possible to assess what the market will be and how much expenditure it is sensible to invest in the project. This is the step in the process where it is most important to budget. If you have not had commercial interest from others to a significant enough level by this time, it is the moment to decide to only take your application forward in a small number of countries – or not at all.
There are also some regional patent applications that provide protection in lots of different countries. A European patent application (nothing to do with the EU) covers about 40 European countries, and enables you to get a granted patent for all those countries. Once a European patent is granted you do have to take action to put the patent into effect in the countries where you want patent protection.
You have to file a patent application before you make any non-confidential disclosures of your invention. As mentioned above, once a first application has been filed, you have a year to file in other countries and claim back to the filing date of the first application.
It is possible to file a patent application for an idea, but it is often sensible to wait until you have developed a prototype or proof of concept. In making a prototype or proof of concept you may well have overcome some technical problems, the solution of those problems being technical developments that may be patentable.
This sounds like a daft question, but you need to know who will be the owner of the patent application. This could be a company or a person. Joint ownership by two or more companies or people is possible but is not always a good idea. You will also need to identify all of the people that made an inventive contribution i.e. the inventors. You will then have to ensure that all of the rights of the inventors have been transferred to the prospective owner of the patent application. For example, if someone is an employee who is paid to invent, then their contribution will be owned by their employer. Your patent attorney will be able to help out with this. This should all be sorted upfront before a patent application is filed. It’s often easier and cheaper to sort this out in the beginning, but far more difficult and expensive to sort-out later down the line when an invention has been identified as valuable.
File a patent application yourself and then expect your patent attorney to make it better. This will not work, and is a false economy.
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Simon Haslam Of Counsel