Patenting a product

[Mudgey]

Hello,

I have an idea for a product that could potentially be a high revenue product, my question is is it worth patenting a product? There is currently nobody offering this item but it wouldn't be too difficult for competitors in the same markets to develop their own once they saw it.

Is it expensive to patent an idea, renew it yearly and then if somebody does copy it how can you protect it?

I would be interested in hearing from other people who have been through this process.

Cheers!

[lostmotel]

I've not done it myself, but I'm a patent attorney so I've done it for other people

First and foremost, please make sure that no public disclosure of the invention is made before the decision to file a patent application (or not) is made. Disclosures under a confidentiality agreement are okay, but they can be broken and so getting advice on filing an application at an early stage is important.

I think you've answered your first question yourself. Having a patent means that you will be able to prevent others from making, selling offering for sale, using or keeping the product. You can of course licence others to do things that otherwise would infringe the patent. If the product is going to be lucrative, having market exclusivity will put you at a massive advantage.

It can be expensive to obtain a patent, as can enforcing it. For a UK patent, it may be a few thousand pounds to draft and file it, and another £k or so to get through it grant. For a US patent, budget at least £10-15k to get through to issuance.

On that note, remember as well that patents are territorial, so a UK patent only has effect vis a vis the UK. A typical strategy is to obtain patents in the countries where the product is most likely going to be made, as you can then control production rather than trying to control sale which is usually in a greater number of countries.

Most patents never get litigated, but plenty of deals get hung off them.

Feel free to get in touch if you'd like an initial consultation.

[jammy_basturd]

Can a patent stop a third party selling an item in the country of the patent, even if the third party is a reseller of that product?

[lostmotel]

jammy_basturd said:

Can a patent stop a third party selling an item in the country of the patent, even if the third party is a reseller of that product?

That's a classic "it depends" and is all to do with exhaustion of rights.

On a national basis, if the reseller legitimately purchases the item from the patent owner or with the patent owner's consent, then that exhausts the patent rights. The reseller can put it on the market, and the patent cannot be used to stop them. This is known as the first sale doctrine in the US.

At an EU level, then let's consider the above situation, say the patent owner only has a UK patent. The reseller buys the item from the patent owner or with the patent owner's consent in Ireland. EU law says that they can import the item and sell it in the UK because the sale in an EU member state exhausted the national patent rights.

At an extra-EU level then under English law it is said that there is an implied licence to re-sell a product that accompanies the first sale. However, this can be nullified by imposing restrictions in the initial sale contract, which may be passed along with the chain of title.

All of the above assumes the item was bought from the patent owner or with the patent owner's consent. If not, then the patent may be enforced. Say someone had a UK patent for a widget. An unscrupulous party buys those widgets from a knock-off manufacturer in China, and tries to import them into the UK for sale. The UK patent would enable that practice to be stopped.

[jammy_basturd]

Thanks - it was mainly that last example with regards to cheap copies being made in China that I was wondering about.

[Classy6]

Been through the process, very expensive if you want to protect the idea in multiple countries. Also unless it's completely unique you'll have lots of kick backs during the searches where you will need to compromise on terms or either alter design/functionality etc in order to get it granted due to the most ridiculous things being classed as 'similar'. It also costs to maintain a patent after it's been issued, per territory, per annum.

The bigger issue is if the idea is that good and you find someone encroaching on your patent, they will usually be a much bigger, well funded business. How much time/money and resources will it take to fight them legally? More than you can afford realistically, especially if you're start up with a non existent cash flow trying to get the idea out there.

They're a good deterrent if you have the next big idea but I think these are few and far between these days. If we had our time again we would have put the money we'd spent on patents towards growing the business instead and getting ahead of the competition, rather than protecting an unknown infant idea. Sonos speakers springs to mind as a easy example.

Just my 2p, best of luck on whatever route you take