(DISCLAIMER: This page content is not legal advice, and should not be construed as such.)
Everyone -- whether attendee or not at one of the MakeSpace events in the series of “Patenting Experiences” -- shall be encouraged to contribute to the collective intelligence of this wiki.
It shall help makespacers, entrepreneurs, or inventors navigate the patenting jungle, deal with patent attorneys, save resources, and improve commercial IP value, etc.
Whatever you discover that needs improvement, please fix it ASAP, ideally by respectfully correcting what is not yet right, and by generously adding what is yet missing. Thank you in advance for your wise contributions.
First Rule of Patents
... is don’t talk about patents!
Or more accurately, if you think you have a patentable invention, be careful about discussing the specifics about it with anyone until you have the patent filed. Most particularly don’t talk about it on the internet. The risk is that if you accidentally publish the details of your idea, that can constitute prior art that would prevent your patent being issued, or could invalidate your patent if it is later challenged in court. Or that someone you tell casually could write up and patent the idea before you and gain priority.
That said, don’t be too paranoid, just be careful. You can talk to people about your invention if you have a written non-disclosure agreement (NDA) signed with them.
What is a Patent
Officially, a patent is legal document which gives an inventor the legal right to a monopoly to exploit an invention for a period of ~20 years, in exchange for disclosing their invention. In practice, the long term public benefit of disclosing an invention might have made sense in the 19th century, but is no longer particularly. So now patents are largely a way for inventors to protect their idea whilst they try to commercialise it.
Patents are granted by patent offices which typically represent the government of a country and the legal protections of the patent only apply to the territory of that country. So if you just patent in the UK, someone in America is at liberty to read your patent and exploit it America, or any other country, except the UK. You can file patents several patent offices worldwide (usually within a year or two of filing the patent in the first territory), but the costs of paying for all those patents can be very high - think hundreds of thousands of pounds spread over 20 years. For a commercially valuable idea which can generate millions it is worth it, but not all ideas are worth that much. There are strategies of patenting in fewer territories to save costs, but you probably want legal advice to avoid making a mistake.
The patent offices you are most likely to be interested are the UK, USA, Europe and China.
The rules for different patent offices around the world are gradually coming into alignment, but some differences remain. Typically, to be eligible for a patent, an invention must be;
- new, or novel
- inventive - that is not obvious, or a small tweak on something that already exists
- a thing that can be made or used (UK), or more generally within the category of ‘things that can be patented’ for a particular patent office
- useful (US)
In general, the US patent office is more open to the list of ‘things that can be patented’, including biological patents and software patents.
How much does it cost
It is not easy to get a solid answer to that question, it depends to some extent on how complicated your patent is. But here are some ballpark 2019 figures for the UK.
Patent Costs gov.uk ... https://www.gov.uk/government/publications/patent-forms-and-fees/patent-forms-and-fees (doesn't include those pesky lawyers though!)
In a discussion with Nash Williams they advised that 9 months after the initial patent there will be search report that will cost £300 - £1000 (UK patent). In additional during the pre-publication & patent pending there may be any number of correction/clarification requests from the Patent office, which will be handled by the patent attorney. The cost of which is £800+ per query. And this might become drawn out and expensive depending on the complexity of the patent situation.
|Action||Cost (£ GBP)|
|Patent lawyer to write initial patent||3000 - 5000|
|Annual maintenance fee, year 1||600|
|Annual maintenance fee, year 2||700|
|Annual maintenance fee, year 3...||800 - 4000|
- Grace period: You can file a patent with the UK IPO, which gives you 12 months to disclose your patent publicly without losing the right to patent in other countries. So you can file the patent, which gives you the right to include the words "patent-pending", and talk to customers, investors, or competitors to gauge the value of your invention before you spend a lot of money with applications in each individual country. The rules are complicated in other countries, see below. Read more at https://en.wikipedia.org/wiki/Novelty_(patent).
- Patent Cooperation Treaty: This allows you to "buy more time." Before the expiry of the grace period (usually 12 months), you would normally need to file applications in individual countries. But you can also file a Patent Cooperation Treaty application with the WIPO in Geneva, which effectively extends the grace period worldwide for another 18 months. The cost is around £3,700. In total, you can have 2.5 years to gauge the value of your patent before submitting in each country. Two caveats are that (1) several middle-Eastern and Gulf states are not signatories to the PCT; and (2) if you file a PCT application, you cannot file a patent in France, you must instead file a European patent designating France. Read more at https://en.wikipedia.org/wiki/Patent_cooperation_treaty#Publication .
- Is it non-obvious?: In the UK and Europe, IP Offices approach non-obviousness by asking first "what problem does this solve?" And then, "Is the way that it solves the problem inventive?"
- UK search: After filing a patent, you can file a search request at the UK Patent Office. The results normally take 4 months, so people generally do it 6 months before the expiry of the grace period. This will give you an idea of how an examiner will approach an application, and if there are going to be any highly troublesome search results. It's very likely that the most relevant would be found, although this isn't 100% guaranteed. You can then use this to make an informed decision about filing overseas. A UK search costs around £400 plus attorney fees.
- Include as many claims as possible: After submitting a patent application, you can only remove "claims" (individual aspects of novelty or invention), you cannot add them. So you should include as many claims as you find plausible.
- DIY patent: If you can't afford an attorney to write a patent, you could search some of the patents that are relevant for your invention and get inspiration for the style. This option is risky because, if you omit some crucial aspect, or if you use the wrong wording, you can no longer alter it. Per above, you cannot add claims after submission.
- micro-entities in the US: The US IPO offers 75% reduction for micro-entities. Read more at: https://www.uspto.gov/patents-getting-started/general-information-concerning-patents .
- Provisional patent application in the US: you can file this application, which has no review and costs between 65 and 260 dollars, and you can use "patent-pending." Read more at https://en.wikipedia.org/wiki/Provisional_patent_application and some advice at https://www.forbes.com/sites/stephenkey/2018/01/08/dont-file-that-patent-yet-file-a-provisional-patent-application-first/
- European patent: Europe can be treated as a single country for patent purposes with a centralised application that is searched and examined, and then translated if successful.
- Cancelling and refiling': a patent application is not in the public domain, so some inventors cancel the application and refile it to get another 12 months. Beware of the risks.
- First-to-invent: The US has the rule of "first-to-invent". Other countries have the rule of "first-to-file". So, if you file in the US, you may consider mailing yourself a copy of your invention and keep it sealed and dated in case you need to prove you were the first to invent.
- Market size: for consumer goods, you can file in some bigger countries and use the brand to "spill-over" nearby markets. For example, the Canada and the US have such integrated markets, and Canada is so small compared to the US, that it makes little sense to file in both.
Grace period and disclosure
The grace period in the UK is not a grace period per se, as the phrase would be used in the US. In the US, you don't have to file ANYTHING AT ALL to take advantage of the one-year grace period. You can publicly disclose, then file a US application up to one year later.
However, if you disclose in the US before an application is filed, this can destroy novelty in any application that you make OUTSIDE the US subsequent to this. The grace period only applies inside the US.
In contrast, in the UK, if you don't file an application before you disclose (and the UK does not use the 'provisional' title - the US and one or two other countries do, but not the UK), then you have destroyed novelty in any application that you subsequently file in the UK or any other country without a grace period.
If you file an application and then disclose, you HAVE TO hit all the downstream deadlines from that point on. You cannot withdraw and refile, because the disclosure destroys the novelty of any post-filed application.
1st Patenting experience meeting at Makespace
Patenting Experiences, 2019-11-13, Wed, 7-9pm, MakeSpace classroom, Mill Ln, Cambridge, UK
(We can possibly later leave out the event date and time, not structuring the content at all by when it came in, but only add content (incl questions for others) and structure.)
(A few bullet points to get your creative juices flowing…please expand/add/improve at will.)
# book recommendations:
- Patent It Yourself by David Pressman
- Patent Pending in 24 Hours with CD by Richard Stim , David Pressman
# some grants, e.g. from UK Innovate, come with free IP search budgets
# possible extension of time of “patent pending” by withdrawing the patent application and then refiling anew, although this looses the priority date and risks that someone else has filed meanwhile something similar
# website: Five IP Offices has a good patent search tool, with links between patents/prior art
# website/youtube channel: InventRightTV
# various commercialization strategies mentioned:
- Own IP and produce/sell yourself
- License IP without own production or sales
- Get acquired by large firm, save time, enter new game at higher level
- Protect against competition by cooperating with adversary of biggest competitor
- Create sticky consumer brand and outsell the competition
- IP valuation: use an IP actuary or (the cynical view) patent value equals legal defense fees
- General tip: It can be an expensive process and to be worthwhile an IP strategy needs to be very closely tied to the overall business strategy. In addition to the patent research you have started you should also look at the market sizes and potential profit you might expect. Many time, perhaps most, unless there is a clear technology difference, and a large market, and a tenfold cost/benefit improvement over the competition, patents can be more expense than advantage. They can however add to the value of a company if you are looking to sell to a larger player.
# protection without patent:
- effective commercial contracts re manufacturing or sales
- mind space (Federer) / brand equity (Coca Cola) / cult following (Apple)
# databases re patents, brands, trademarks, designs, etc:
- Derwent via Cambridge University Library or British Library London
- WIPO Guide to Using Patent Information incl Search Strategies https://www.wipo.int/edocs/pubdocs/en/wipo_pub_l434_3.pdf
- WIPO IP Facts and Figures 2018 https://www.wipo.int/edocs/pubdocs/en/wipo_pub_943_2018.pdf
- WIPO Free & Commercial Patent Database Overview: https://www.wipo.int/tisc/en/ppt/Philippines/overview_of_DBs.pdf
# firms that give some free advice:
- many single or company patent lawyers will outline the whole work, give a cost overview, and timelines
- if you were buying a house you'd consult a professional, after all
- Nash Matthews, Hills Rd, CB: they offer ½ hour consultation at no cost, very friendly, bright people
individual (optionally anonymous) opinions
Miguel, September 2020
With inventions meant for the general consumer, patents have less value compared to the brand and marketing, e.g. consumers buy the expensive Legos rather than copy-cats. For inventions meant for companies, patents have more value because companies are more price-sensitive and spend more time searching for alternatives, e.g. school districts would not buy the expensive Lego.
Attorneys do not normally have a stake in the patent (e.g., equity in your company) and should give dispassionate and neutral advice. As attorneys have different opinions and experience, you may want to consult with a few, and they normally offer a free half hour. Attorney-client confidentiality means that you do not need to sign a Non-Disclosure Agreement when talking to an attorney.
Exercise judgment before deciding to file a patent. You may end up spending significant time and money when good marketing brand building could have more results.
If, like me, you're the kind of person who likes to publish inventions on Thingiverse and contribute to the community, any of those may be held as prior art against your further inventions, if only because they're yours and will be the first thing that an examiner searches for.
I used and recommend Lock IP for the patent I filed (http://lock-ip.com). The attorney is smart, professional, and rigorous. He was recommended to me by another Makespace member who also filed a patent.
I also had conversations with Basck (http://basck.com/), they are smart, kind, and offer good value-for-money. They have offices in continental Europe, India, Brazil, and the US, so they may be able to offer support in those areas.
(DISCLAIMER: This page content is not legal advice, and should not be construed as such.)