Wayfair Group
A path for every invention Making the Patent system work for you, rather than against you.
When you file a Patent Application for an invention you immediately trigger a series of financial and administrative deadlines which must be met otherwise you will lose the rights to your invention. The biggest problem for most people is that these deadlines do not always coincide with the plans for commercialising an invention. This often results in development projects being aborted, simply from lack of experience in using the Patent system. To explain this, one needs to know how the Patent system works explained by the following steps. Step 1 - A description, with any drawing(s) necessary, is lodged at the British Patent Office with an appropriate form and fee (the description is best drafted by someone with experience). The Patent Office gives you a Patent Application number and a date of filing. The date these documents are lodged is the date of the Patent Application, often referred to as the "Priority Date". These documents sit at the Patent Office for a period of twelve months - they are secret at this stage and no person is allowed to look at their content. N.B. (i) You should not disclose your invention to any persons until you have filed your Patent Application as this may invalidate it. However, once your Patent Application has been filed, you are protected for what has been disclosed therein and can then talk about it to anyone or to any companies, and indeed license or market it at this stage.(ii)Also you cannot make any changes to your Patent Application. Step 2 - To continue with your Patent Application in the UK, before the end of a twelve month period from the date of filing your Patent, you must ask the Patent Office to carry out a search by filing a form, a fee, and further documents. A search is done to see if anything has been published before of a similar nature. About 6 months later (18 months from the original filing date) , the results of the search are published with your Patent description. This is the first time your Patent Application is open for the public to read. (It is also possible to apply for the search to be done at the outset when filing the Patent Application at Step 1 and in some cases this may be advantageous if one requires an early indication of the breadth of protection, if any, one is likely to get.) Step 3 - Within 6 months of publication, you must file a request for examination, and a further fee. During this stage, inter alia, it may be necessary to argue that your invention is new and involves an inventive step over any prior published documents found in the search. Providing you are successful in this, and subject to various other aspects of the Patents Act, you get your Patent. Step 4 Overseas Patents - Most countries in the world are party to an international agreement whereby any Patent Applications filed in foreign countries can "claim priority" from your UK Patent Application (i.e. effectively be back dated to the date you originally filed your UK Patent Application), provided each is filed within 12 months of the UK Application date. Each foreign country has its own Patent law, but often you have to go through a similar process as Steps 2 & 3 in each country. It is also possible to file a single, so-called European Patent Application covering much of Europe. Furthermore one can also file a so-called International Patent Application covering many countries including USA, Japan, much of Europe, Russia, Canada and Australia. Again with both of these, you often have to go through a similar process as Steps 2 & 3. Mistakes and General Advice. 1. Many people file a Patent when the idea is first conceived. This leads to two problems.
(i) Most product ideas take longer than twelve months to develop and, until they are developed, it is not usually possible to ascertain the market potential. As a result most people find that they get to the end of the first twelve months period (Step 1) and find they need to come up with the fees to initiate Step 2 (continuation of the UK Patent Application) and Step 4 (filing of overseas Patents) at a time when the commercial viability of the idea is unknown. (ii) Conceiving a product idea is only a first step in a long development path. When you eventually complete the development path, very often the end product has changed dramatically from the product first envisaged and the real invention lies in the results of the development. If the Patent is filed at the outset it may not include the real invention. It is not possible to change the Patent when it is filed. One solution is to keep the idea confidential while it is being developed, and file a Patent upon completing the development. This ensures that the Patent covers the developed product and allows twelve months of market research and sales before the need to incur major Patent expenses and during this time the amount of any overseas protection worth funding can be assessed. 2. It may well be that twelve months after filing a Patent, you will not be in a position to decide whether to move forward. This could be because it has taken longer to develop the invention, funds are not available for this, or perhaps you have entered into discussion with a Licensee (a company to take up your idea) but negotiations are not yet finalised. Provided you have not sold or published your idea or have not talked to people about your idea other than confidentially, it may be possible to withdraw your Patent Application and re-file it again so buying yourself another 12 months. There is no filing cost involved, but you will lose your original priority date. Do not do this unless you have talked it through with a Patent advisor. There may be other circumstances which also need to be considered. 3. Suppose six months after filing the Patent Application you have done nothing with your idea. You now intend publishing your idea imminently at an exhibition, or perhaps in a trade or consumer magazine or other media, or disclosing your idea for the first time to a potential Licensee. You might consider whether you should withdraw the first Application and file the Application again as you will not have this opportunity after it has been published. Again, do not do this unless you have talked it through with a Patent advisor. There may be other circumstances which also need to be considered. 4. The filing of foreign Patents at the end of twelve months is expensive. It is possible that after filing, some prior Patents may be dug up in subsequent searches preventing you from getting foreign Patents as well as a UK Patent. In such a case, you would lose the filing costs. To minimise this risk, we often suggest having the UK search done (you will need the help of a Patent Agent) say six months after the first UK filing date which is relatively cheap and which should bring to light a high proportion of past Patent specifications which might be found by other Patent Offices. The results will be out three months or so from requesting the search, i.e. nine months after filing, leaving good time for the results of the search to be assessed before committing funds to foreign Patents. Not everyone will be in a position to know whether they want to file foreign Patents so soon after filing the UK Patent, but this may be an attractive option to those who have made this decision at an early date. Commercial exploitation of the idea may be within the existing business, or, it may also be relevant to seek license agreements with bigger companies and companies in other markets. Approaching these companies should only be initiated once the Patent protection process has reached the appropriate stage. Wayfair Group specializes in helping companies to use the Patent system wisely and economically and to maximise the return on the idea.
Philip Ingham, Wayfair Group, 01798 874941, Ingham@wayfair.demon.co.uk ,www.wayfairgroup.co.uk