If you have an invention and wish to obtain protection, what should your strategy be? The easy answer might be to obtain as many good patents as possible, in any and all countries where your invention might be of commercial value. But in reality the scope of protection sought must be balanced against the cost of obtaining it, taking into account the level of profit which can be expected from the invention. From the individual inventor to the multinational company, everybody is seeking good value for money.
As you might have expected, there is no single best way to go about protecting your inventions. Your patent attorney should understand your commercial goals and provide individual advice. However, there are some pieces of advice which are applicable to the vast majority of patent applicants and it is useful to understand the options which the patent system makes available to you.
Choose where to file your first application
Many people are understandably keen to obtain worldwide protection, but making a UK national application first makes sense for a lot of British clients, since the official fees are far cheaper. An international (PCT) application can be made after one year, at which point the UK search report will have provided a valuable indication as to patentability – see below.
Timing your first application
To design and manufacture an actual product which realises your invention, you will of course need to reveal the details to others. Disclosing your invention before filing a patent application can ultimately lead to your application being refused, or your patent being found invalid. However, this does not necessarily mean that you should rush to file.
Bear in mind that you can disclose your invention prior to filing if you ensure that the people you are speaking to are under a duty of confidence. My previous article on non-disclosure agreements explains this in more detail, and in particular any reputable design company will be happy to sign an NDA.
After filing your application you have only one year in which to make applications in most foreign countries. If you need investment to make these possible then the clock is ticking, so before you file you would be wise to ensure that you can make the best use of the next twelve months. Plan as much as possible who you will approach and what you will say to them. Filing a patent application and then wondering how to sell your idea is wasting valuable time!
Do your research, and let the patent office do research for you
Some brilliant inventions, for whatever reason, never realise commercial success. So just because you have never seen anything like your invention available to buy in shops, that doesn’t necessarily mean that nobody has had the idea before. Inventors can be surprised and disappointed when a patent examiner finds a previous patent application disclosing the same invention.
Although it should be said that hitherto unknown prior art completely anticipating an invention is in our experience fairly rare, and there is usually something left to patent, it is always best to go into the application process having obtained the best possible information about what has gone before.
Patent searching does not have to be expensive. The ‘Espacenet’ service provided by the European Patent Office allows you to search one of the most comprehensive patent databases in the world and is free-of-charge. It is also worth considering a commercial search. Adrian Hocking’s article goes into more detail about the benefits of searching.
Whether or not you commission a commercial search before filing, we always recommend requesting a patent office search when filing your UK application. The official search must be completed in due course anyway, and there is little point in delaying the request considering the low cost involved. A search report will typically be drawn up within around four months of your request, and provides an invaluable early indication as to the likely outcome of your application. Without a search report it is very difficult to make a sensible decision as to whether international applications, which must be made within one year of filing, are going to be worth the money.
For similar reasons, it is also worth considering requesting a combined search and examination. An examination report goes into more detail than a search report, providing you with further useful information. However, the advantages of this option must be balanced against the considerations discussed below.
Don’t rush unless you need to
The UK Intellectual Property Office offers a certain amount of flexibility in terms of the timing of your application. Many of our clients are initially keen to get a granted patent as quickly as possible, and applications can usually be accelerated if this is useful to you. However, if you are suffering no immediate problems with infringement and there is no other commercial reason for accelerating, then slowing the application down as much as possible can help cashflow without compromising on the eventual quality of your patent. Examination can be requested up to two years from filing.
Keeping your options open
Your new product probably has a certain number of features which are already well-know. A radical new concept car, after all, is still likely to have a certain number of wheels, and those wheels are likely to be round. Anything which is new though is potentially patentable, and your product may have a number of features which are not found in the prior art. Which of those features should be protected by patents? Ideally, all of them. Your most valuable products should be protected by a “thicket” of overlapping patents to stop determined infringers from working around the scope of a single patent. But how do you know which are your most valuable products? Often this will not be clear when first filing an application.
Divisional applications provide for the possibility of eventually obtaining multiple patents from a single filing. A divisional application can be made at any time whilst the “parent” application is still pending, that is, the parent has not been refused, withdrawn or granted. Subject matter is “divided out” of the parent application to form a separate application.
However, no new subject matter may be added when filing a divisional application. US readers take note – there is no equivalent to a US “continuation in part” in the UK or Europe. It is therefore vital that your product is described in minute detail on first filing, so that you may keep your options open and file divisional applications for any and all features of your product which are novel and inventive.
The patent system offers many options to the applicant. There is no single best strategy, although some advice is near universal – for example, we almost never recommend delaying the request for an official search.
As attorneys, we do our best to help our clients understand the patent application process. Clients can get the best out of their attorneys by similarly ensuring that their business aims are understood. The application process can go quiet for fairly long periods, but you shouldn’t wait for your attorney to contact you if your application has taken on a new urgency, or your invention has changed direction. Get on the phone and call us!