We provide a lot of patent advice and guidance to many designers, inventors, engineers and entrepreneurs. There are a number of common questions or points which, due to a general lack of education regarding intellectual property (IP), are asked time and again. We thought it would be useful to go over and discuss some of these:
I’ve discussed my idea and everyone thinks it’s great, so now I want to protect it
The variation on this statement which is also often heard is: ‘My product has been on the market for 6 months, is selling well, and I’m now worried about it being copied, so I want to protect it.’
As a general rule of thumb, you should keep your invention secret or confidential before you make the decision whether to patent it or not. It may be that, after taking advice from a patent attorney, you decide that the idea is not patentable (there are some exclusions from patentability in some territories, such as methods of surgery, rules for games, purely software and so on). But, you must make that decision before you disclose the invention or make the development public. If you decide not to protect your idea, that is absolutely fine, but make that decision before you talk about it outside of confidentiality.
A selection of examples: if the idea is discussed with a potential buyer without a confidentiality agreement, then that is a public disclosure; if you make the product and start to sell it in a shop or on a website, then that is a public disclosure; even if you discuss the idea with friends and family over dinner in a restaurant, if it is not understood that the conversation is confidential, then that is also a potential invalidating disclosure.
One thing to bear in mind: if you protect your idea with a patent and then need to enforce it against a third party, for example, a rival company that is copying your product, the rival company will try and knock your patent out (because then you won’t be able to enforce it against them!). One way to knock the patent out is to find whether it has been disclosed publicly (outside of confidentially) before it was filed. If the idea was shown on a website or was discussed with an interested buyer, for example, that will prejudice the validity of your patent, making it potentially worthless.
The take away is to ask for patent advice from a legally qualified patent attorney early on and before you start working up and developing the idea. Just ask!
I don’t have any overseas markets right now for my product, so I will file foreign patents later on
Patent law is complex and has many strict rules, requirements and deadlines. One of the most useful is that, following your first filing typically in your home territory, there is an international convention (the Paris Convention) which gives you a 12 month grace period to further develop your idea, publicly if needs be (in other words, with a product design company, marketing agency, web design company, focus groups, and so on), whilst still giving you the opportunity to protect potential overseas markets without your first home filing and any subsequent disclosure knocking out those overseas patent applications.
However, that 12 month window is fixed in stone. Once that 12 month window expires, you cannot link follow-on patent applications back to your first home filing. Under patent law, the earlier first filed home application thus becomes relevant as ‘prior art’, and will be raised by the patent examiner against the later filed applications.
For example: you file your first ‘home’ (also called a ‘priority’) patent application on 1 April 2016. You must make a decision on corresponding overseas patent applications by 1 April 2017 (12 months later). If these are filed by 1 April 2017, then they can be linked back to your ‘priority’ application of 1 April 2016, and this plus any subsequent disclosure will not cause issues. If your overseas applications are submitted on 2 April 2017 or later, your priority patent application of 1 April 2016 will knock out or cause issues for the later filed overseas applications.
The 12 month grace period does go by extremely quickly, especially if you have family and a work life to deal with also! You do need to therefore make the most of that 12 month period so that, as the anniversary of your first patent filing date arrives, you are in a position to know whether or not you are likely to have overseas markets and can make a firm decision. You cannot later on change your mind and come back to this.
The take away is to analyse all your markets within the 12 months after filing your first patent application, and be ready to make a yes or no decision as to whether protection is needed. You cannot change your mind later on.
I’ve been told I don’t need a patent, just get in the market and make as much money as possible before I’m copied
This is an option, but not necessarily a smart move. A patent gives you leverage to encourage investment and/or to give confidence to a buyer considering purchasing your company. A patent and all the IP (intellectual property) associated with an invention or development are assets in your company. Consider your long term goal: if you are intending to start a business behind your product, then in 5, 10 or 15 years, you may be intending to sell the company as part of your exit or retirement strategy. A buyer needs confidence that they can purchase your company and its assets, and still be competitive in the market by keeping rivals away. Without the patents and brand protection, there is nothing to stop a rival. It devalues your company, and makes you far less attractive as a purchase.
It makes no sense not to consider patenting a new development. You may decide, ultimately, not to patent the invention, but again at least ask your patent attorney the questions so you are making a fully informed decision.
If you are a start-up, then larger and more established companies have the immediate resources to tool up and market much more quickly than you typically will. Without the deterrent of patent protection, you have nothing to dissuade a competitor.
IP insurance is available, and this can easily support you in defending your rights and pursuing a patent infringement issue.
The take away is to consider the longer term exit strategy of your business. If you want to make yourself attractive to investors and buyers, then you need your IP protected to give your investor or buyer confidence.
I can write my own patent, I don’t need a patent attorney
Patenting is a serious legal process that takes many years of training. Consider your long term goal. Imagine your business has grown over the last 10 years, and now has a multi-million turnover. You have a large established company that is interested in purchasing your business, allowing you to walk away with a large pay out. 
The large established company will ask their patent lawyers to evaluate your IP, including your patents: are they worth the price that you are asking; will the patent rights defend the market that the large established company is buying into by purchasing your business; are there obvious loopholes in the patents? If you have written your own patent, with all due respect, the likelihood of it being worth the paper that it is written on is slim.
The take away is again to consider not only the ‘now’, but more importantly the long term strategy. What do you want to achieve with your business. If you want to make yourself attractive to an investor or buyer, having professionally prepared patents is a must.
A patent is too expensive
A patent is an expense, but does not have to be hugely expensive, certainly compared to product development. A patent is an investment, much like your stocks and shares. If you are contemplating starting or running a business, then advice from professionals on all aspects (not only IP, but also tax, insurance, pensions and so on) should stand you in good stead as the company builds and develops.
With a young business, there is always a friction between available finances ad what needs to be done to grow. Quite often, patents and associated IP will get pushed down the list. This can be a big mistake. It is well known that as much as 70% of a company’s assets can be intangible, such as the IP. As part of your 5 years business plan for your company, focus should be given to your patents, designs and brands. They should increase the value of your company over the longer term by protecting your niche in the market.
The take away is that patenting is a serious and reasonably complex legal process. It is an expense, but does not have to be overly expensive in the great scheme of starting and running a business. It should be planned for, and thus can be accommodated in any overall longer term plan and strategy for the business.
We hope the above gives some useful insights and advice. If you do have any questions about patents or protecting your products, please do just ask, we’re always happy to help.
If you would like further information, please contact us via email, by telephone: +44 (0) 1242 691 801, or using the form below and we will be happy to advise and guide.
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