international or uk patent application?
Discussion
I am about to go through the lengthy process of applying for a patent, I’ve had much advise but 2 conflicting thus far.
Obviously funds are not unlimited, but is one best filing a UK application ( about £2500 )and sounding out licensing opportunities before going down the full international route, or does having the full international application ( £6500 )make life easier when again sounding licensing?
Once I have the UK application my product will have been published, and therefore not legally copied any way, as I understand it. Obviously, we intend to get complete world protection, but only if there is interest first.
Any thoughts welcome.
Obviously funds are not unlimited, but is one best filing a UK application ( about £2500 )and sounding out licensing opportunities before going down the full international route, or does having the full international application ( £6500 )make life easier when again sounding licensing?
Once I have the UK application my product will have been published, and therefore not legally copied any way, as I understand it. Obviously, we intend to get complete world protection, but only if there is interest first.
Any thoughts welcome.
File the UK (or a European first). This sets a 12 month proiority clock ticking within which you can file foreign applications (including a PCT Application - which is the closes thing to an international application) which can claim the filing date of the original.
Doing it this way keeps your options open for the longest time at the lowest initial costs, you shoudl get an initial search report on the application before you file the PCT application and this can save money if the report is bad and you don't want to go ahead. Also, patent term is calculated from the filing date of the patent (not from the claimed priority date) so by filing UK and then within the year filing PCT the potential term of protection is extended by up to a year.
As far as pitching to investors goes, having a UK application on file and the option to file elsewhere in the world may be attractive to potential investors as they can have some input into the countries in which you should get protection - it also gives you a chance to get some research done and find out how much inteerst there is and where and hopefully get some initial funding to help with later patent costs.
Speak to your patent attorney about this and make sure you understand what each of the options mean - you are probably paying a fair amount of money to this person so they should be willing to explain things to you - it will help in the long run if you do understand at least the basics.
Send me an e-mail/reply to this thread if I can be any more help.
Alex
Doing it this way keeps your options open for the longest time at the lowest initial costs, you shoudl get an initial search report on the application before you file the PCT application and this can save money if the report is bad and you don't want to go ahead. Also, patent term is calculated from the filing date of the patent (not from the claimed priority date) so by filing UK and then within the year filing PCT the potential term of protection is extended by up to a year.
As far as pitching to investors goes, having a UK application on file and the option to file elsewhere in the world may be attractive to potential investors as they can have some input into the countries in which you should get protection - it also gives you a chance to get some research done and find out how much inteerst there is and where and hopefully get some initial funding to help with later patent costs.
Speak to your patent attorney about this and make sure you understand what each of the options mean - you are probably paying a fair amount of money to this person so they should be willing to explain things to you - it will help in the long run if you do understand at least the basics.
Send me an e-mail/reply to this thread if I can be any more help.
Alex
cptsideways said:
Do you have the resources to back any challenges?
If not don't bother, get it liecence made, get it sold & turn it round asap.
You can get IP litigaton insurance to help with taking action - in general both sides want to avoid court costs of litigation so some sort of settlment is negotiated, which need not cost a fortune.If not don't bother, get it liecence made, get it sold & turn it round asap.
Problem with doing nothing is that you then have nothing with which to defend your position, if you have a patent/registered design/registered trade mark at least you have something with which to work, particularly if you are looking for third party investment.
Alex
Never had Leeds do a search so can't comment...The UK IP Office will undertake private searches, but I think that their prices have been creeping up.
If you haven't spoken to a Patent Attorney yet it's a good idea - they will usualy do an initial consultation for free and can give you some idea of patentability etc - take the results of any searches with you.
E-mail me if you want any suggestions for Attorneys to see.
Alex
If you haven't spoken to a Patent Attorney yet it's a good idea - they will usualy do an initial consultation for free and can give you some idea of patentability etc - take the results of any searches with you.
E-mail me if you want any suggestions for Attorneys to see.
Alex
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