5 most frequently asked questions about patents
We answer five key patent questions.
It’s no secret that obtaining a granted patent can be a long, complicated, and expensive process. However, it is not all doom and gloom as there are many ways to save money and help you to realise a return on money invested in a patent. Here we provide 5 examples of important ways costs can be reduced in obtaining and maintaining a patent, as well as when taking action against a competitor if necessary.
It can be tempting to try and save costs on the initial drafting of your patent application, after all drafting and filing a patent application using a qualified UK or European patent attorney can cost upwards of £3000.
However, this is counterproductive and may lead to a patent application that ultimately ends up costing far more in the long-term than the apparent initial saving, through seemingly endless rounds of examination around the world.
A gold-standard and efficient first patent filing ensures that the application is suitable for filing everywhere around the world and includes the correct structure and data which will be acceptable not just in the UK and Europe, but also in the USA, China, Japan etc. where different rules apply.
An efficiently-drafted patent application also avoids throwing the kitchen sink at the application, which can result in applications with up to double the required number of pages, ensuring that you won’t pay “excess page” fees charged by some patent offices (they don’t want slog through 50-100 pages of waffle) and has the added benefit of saving on translation costs when applying for a patent overseas, which can be one of the most expensive parts of the process.
Finally, it is crucial that you find the time to provide all of the data, advantages and optional features of your invention to your patent attorney before the first application is drafted and filed. This will enable a well-rounded application from the outset and avoid any problems with trying to add further features to your application after it has been filed (which is not allowed in most countries, including the UK and Europe).
All patent offices impose deadlines to keep the patent application process moving and to ensure patents are renewed on time. It is very important that these deadlines are met, which is why we maintain a professional deadline reminder system at Wilson Gunn.
If a deadline is missed, obtaining an extension is sometimes possible, but usually only with payment of a fee – and this can significantly increase patent costs.
At worst, a missed deadline can result in the patent being lost, which then wastes any previous expenditure in prosecuting the patent as well as potentially leading to wider negative implications for your business.
As well as missing deadlines, another practice that increases costs is instructing your patent attorneys very close to a deadline.
Whilst we can and will always ensure a deadline is not missed (even if instructed on the deadline day), late instructions can often lead to:
Costs for obtaining a patent overseas vary depending on the country, and can be very expensive. In this regard, an international (PCT) patent application is usually worthwhile pursuing as it delays the cost of processing an application before national offices by 18 months. This gives time for the most important markets to be identified to ensure money is spent efficiently, as well as giving you time to ensure the products covered by the application are commercially viable and/or to identify licensees.
The delay provided by the PCT application can also be sufficient for a UK patent to be granted for the invention before it is examined overseas. The granted patent can then help expedite examination overseas which minimises the heavy cost of overseas patent prosecution.
To save money in Europe, a European patent application can be used to obtain a national patent simultaneously in up to 38 countries. If derived from a PCT application, it is possible to avoid certain official fees leading to further cost savings.
Patents and patent applications are an asset for your business, and like any other asset, you should review them to ensure they are providing a return on the costs required to obtain and maintain them.
For example, you may be able to claim UK Patent Box tax relief to provide a tangible monetary benefit from the patent.
If one of your patents no longer covers your business interests, it may be best to abandon that patent to save on ongoing maintenance costs. We know the invention covered by your patent is your pride and joy (and the result of blood, sweat and tears), but commercial considerations should prevail, and if your patent is dead wood, it should be pruned.
However, before you do this you could consider licensing or selling your patent to generate some additional funds.
If you are concerned about the activity of your competitors, large savings can be made by acting at the right time.
For example, if you are concerned about a rival UK patent application, there is no official fee for filing observations or comments on the validity of the patent application before it has granted. However, once granted, the patent may only be challenged with an invalidity action before the UK Intellectual Property Office or a Court, which can be very expensive.
It is therefore best to proactively monitor competitor activity through watching services. This will ensure you can protect your interests in the most cost-effective way.
At Wilson Gunn we have managed global patent portfolios for over 150 years and are therefore able to help you secure cost-effective protection for your invention in the UK and overseas.
If you have any questions about anything we have covered in this article, or intellectual property in general, please get in touch with one of our team.