Patent advice

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T4NG0

Original Poster:

1,670 posts

180 months

Friday 23rd January 2015
quotequote all
Hoping we have some PH members who know the patent process well and can advise on below please.

With a business partner we have an invention that will be trialled in public in around 4 weeks. From this event we will know for sure if the invention has commercial potential or not. Without going into more detail we are committed to this event, so cannot back out. Not the best scenario, but it is what it is.

I understand you can't patent an invention once it has been made public.

Based on the information below from the Goverment website it appears you only have to submit 2 of the 4 parts to start the process off , allowing 12 months to submit the remainder of info including the "legal" part ...eg Claims

goverment said:
A patent application is made up of 4 parts that need to meet specific criteria.

You must include:

- a description of your invention that allows others to see how it works and how it could be made
- drawings to illustrate your description
- legal statements that set out the technical features of your invention that are to be protected (known as ‘claims’)
- a summary of all the important technical aspects of your invention (known as the abstract)

You have to submit your description and drawings with your application form.

You can file your claims and abstract once your patent is pending, but it’s best if you submit all the parts together.
So the question is , based on the fact we have little time and there is a risk the trial event may prove the invention does not work, would just the submission of the description and drawings be enough to claim our "patent submission date" giving us up to 12 months to submit the "claim" and "abstract" with associated lawyer costs.

The difference between us submitting the first 2 parts vs all 4 incl legal advice is £240 vs £4-5k , so not a difference to be sniffed at.

In an ideal world we would have established the proof of concept / testing in private and allowed plenty of time to submit the patent all in one go, but we are where we are frown

Thanks in advance for any advice and if you can recommend any Patent lawyers that specialise in technology, in the Worcestershire or Gloucestershire area , that would be great

Dave.





Edited by T4NG0 on Friday 23 January 16:37

anonymous-user

53 months

Friday 23rd January 2015
quotequote all
Michael at Downing IP is a member on here

You could do far worse than to contact him, he is good

www.downing-ip.com

T4NG0

Original Poster:

1,670 posts

180 months

Monday 26th January 2015
quotequote all
JPJPJP said:
Michael at Downing IP is a member on here

You could do far worse than to contact him, he is good

www.downing-ip.com
Thanks.

No one else have experience of patents and can comment ?

Croutons

9,807 posts

165 months

Monday 26th January 2015
quotequote all
Lots of patent attorneys on PH!

The claims tend to be written first with the description supporting them, the claims will try to cover more than just the product you are making. You don't get a search by the IPO unless you have claims, so you won't have any idea of the extent (if any) to which you have something which will benefit from patent protection, until.such time as they're filed, along with the fee of course.

Go to cipa.org.uk and find a firm close to you, most will give you an initial chat/ v rudimentary check of what might be out there FOC, then should give you a good indication of the cost for a first UK filing (or indeed fixed), and an idea of what responding to what the IPO says might cost. 4-5k sounds a lot to me, most simple tech is about £1500-2k for a first UK filing, but of course you may have some crazy biotech thing going on so is hard to judge why so steep, and exactly what it includes, ie how inclusive of everything it might be.

Edited by Croutons on Monday 26th January 22:52


Edited by Croutons on Monday 26th January 22:53

Katzenjammer

1,081 posts

177 months

Tuesday 27th January 2015
quotequote all
Hi, I am a patent attorney.

Yes, to get a filing date you only needed a description and any drawings which are necessary to describe the invention. The application can be completed in 12 months by filing the claims, and abstract and paying the filing and search fees.

Alternatively, and perhaps more likely in your situation, within the 12 months you can file an new application claiming "priority" from the earlier one. The new application will retain the filing date of the earlier application. You can also include any modifications to the invention in the interveneing period into the new application. However, as the earier application must have sufficient disclosure of the invention be able to support the new application and it's claims (which may ultimately become a granted patent that will need to stand the test of 20 years) it is recommened you use a patent attorney to draft your applications. 4 weeks is plenty of time to do this and if the inventionis simple enough might cost £1500-£2500.

If you are really stuck for money and/or don't want to involve an attorney at this stage, file as much information you have about the invention in your applicaton and hope that an attorney can somehow make a proper application out of it in 12 months time.

Look on CIPA's website and find an attorny near you and give them a call. http://www.cipa.org.uk/pages/advice-patent

T4NG0

Original Poster:

1,670 posts

180 months

Tuesday 27th January 2015
quotequote all
Thanks guys, much appreciated

Astacus

3,363 posts

233 months

Thursday 14th May 2015
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I would love to know whether this worked out for the OP. Anyone able to provide an update

XBOW

Original Poster:

1,670 posts

180 months

Thursday 14th May 2015
quotequote all
Yes submission was made ok, although there was response stating less than 5% of submissions do not use a patent attorney. Time will tell.

Katzenjammer

1,081 posts

177 months

Thursday 14th May 2015
quotequote all
Going back to your original post you mention that the claims do not need to he filed with the description as they can be filed up to 12 months later. This is of course correct.

However, any claims filed later on must find support in the description as filed, otherwise you will have problems. In addition, filing claims enables a search to be carried out by a search examiner. This can be particularly helpful if you want to get an early indication of the patentability of the invention before you spend big money on patent applications to protect your rights beyond thr UK.


XBOW

Original Poster:

1,670 posts

180 months

Friday 15th May 2015
quotequote all
Fully agree. It was all down to pressure of timescales at the time.