Posted on 11/9/2014

Crowdfunding and the importance of patents


There are two fundamental requirements for patentability in the UK. The first is that your invention must be new. This is fairly obvious. After all, you could not expect to simply patent the wheel! (In its broadest sense, of course). Therefore, your invention must be different in some way from all public disclosures (the ‘state of the art’). The second fundamental requirement is that your invention must be inventive (not obvious) having regard to the state of the art.

The patent application filing date

Importantly, and something which is often overlooked by inventors, the state of the art includes the inventor’s own disclosures. It is therefore vitally important that if you intend to seek patent protection for your invention, you keep it secret until an appropriate patent application is on file and you have secured a filing date. It is important to obtain as early a filing date as possible because anything in the public domain before this date compromises the state of the art and can therefore be used to assess the patentability of your invention.

Securing a filing date and safeguarding your invention is an important consideration for those entrepreneurs and inventors seeking investment from, increasingly popular, crowdfunding websites. This is also an important consideration for any business and sole or joint inventor.

The pitfalls of crowdfunding

Crowdfunding websites have transformed the investment arena and are clearly a good thing for entrepreneurs. However, these websites have also made it extremely easy to disclose information to the general public that should really be kept private. Crowdfunder, for example, allows you to enter details of your invention and your target amount and upload your project for investor consideration. Do not be fooled! This is a public disclosure and, if published before an application is on file, will form part of the state of the art. If you disclose enough detail about your invention, it will preclude you from obtaining a valid patent in the UK and many other potential key markets around the world.

Opportunistic competitors are well aware of this and are no doubt routinely checking crowdfunding websites for any interesting ideas that might be free to exploit. One notable inventor who made this mistake is Scott Wilson who raised $942,578 on the Kickstarter website for his TikTok + Lunatik watch kit. His kit comprised an aluminium watch strap which converted an iPod Nano into a touchscreen watch. Unfortunately for Scott, he failed to adequately protect his product with all available rights and, despite the product’s success, he struggled to stem the tide of imitations entering the marketplace. Had Scott protected his product before disclosing it on the Kickstarter website, he could now be enjoying a much bigger market share.

The moral of the story… Never disclose any details of your invention to the public until your patent application is on file.

What are the options?

In the UK, there are two basic options for initiating the patent application process. The first is known as a ‘provisional’ patent application and the second is known as a ‘complete’ patent application.

A provisional patent application comprises the bare essentials for securing a filing date, namely, an indication that a patent is sought; the identity of the person applying for a patent or containing sufficient information to enable that person to be contacted by the Patent Office; and something which is or appears to be a description of the invention for which a patent is sought or a reference to an earlier filed application made by the applicant or a predecessor in title of his. For this reason, it is usually the least expensive option for securing a filing date.

A complete patent application must satisfy all of the requirements of a provisional patent application outlined above but must also include an abstract and one or more claims, payment of the filing fee and a request for a search which must be accompanied by payment of the appropriate search fee.

The advantage of the provisional patent application is purely down to cost. If it’s your intention to keep costs to a minimum before approaching potential investors whilst still safeguarding your interests, this is the way to go. The advantage of the complete patent application is that you will usually receive a search report from the UK Intellectual Property Office within six months of filing. The search report should give you a reasonable indication of the prospects of ultimately obtaining patent protection and the monopoly rights that go with that before incurring further costs. A favourable search report could therefore encourage potential investors to commit to your invention.

For any inventor hoping to seek investment via crowdfunding or via more traditional routes, he or she would be wise to first seek patent protection via one of the above two routes and to consider other additional or alternative forms of protection before releasing details of the invention for public consumption.

What about other rights?

An invention might also be protected by a registered design or a registered trade mark. These two rights will bolster any protection you might obtain for your invention and will help in any challenge you might mount against your competitors. As with patents, both of these rights require careful consideration before going public with any details of your invention or idea.

We would recommend consulting a patent attorney to prepare any patent applications. Self-filing might be a cheaper option but is highly unlikely to provide the most robust protection needed.

Contact us today

If you are considering filing a patent application for your invention or if you are intending to seek funding for your invention and would like to discuss your options in more detail, please contact us for advice. To contact us click here to complete our contact form and an advisor will get back to you.

Wilson Gunn