Patenting Experiences

From Makespace
Revision as of 00:45, 4 January 2020 by Timhcross (Talk | contribs)

Jump to: navigation, search

(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 you 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) 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;

  1. new, or novel
  2. inventive - that is not obvious, or a small tweak on something that already exists
  3. 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
  4. 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
File patent 250
Annual maintenance fee, year 1 600
Annual maintenance fee, year 2 700
Annual maintenance fee, year 3... 800 - 4000

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:

  • design
  • trademark
  • copyright
  • effective commercial contracts re manufacturing or sales
  • mind space (Federer) / brand equity (Coca Cola) / cult following (Apple)


# databases re patents, brands, trademarks, designs, etc:


# 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

(DISCLAIMER: This page content is not legal advice, and should not be construed as such.)

Retrieved from "http://wiki.makespace.org/index.php?title=Patenting_Experiences&oldid=30038"