Can I patent an idea in the UK which is already patented in the US

[5abi]

I have a product idea that I want to pursue very seriously. I am just drawing it out and getting a CAD done for the product after which I plan to do 3d prototype.

I did a quick search and apparently a similar product is already patented in the US. The patent was awarded or finalised this year.

What I cannot seem to find out is if this patent is enforceable in the UK.

Can I still pursue this product idea and have it patented in the UK? I am only interested to put this out in to the UK market and possibly Europe as well but that can happen later.

I am very new to this and I definitely want to see how far I can go with this. I'd like to learn about first hand experience of something similar to this without spending on patent attorneys. I know that I will eventually have to hire one to see this through but just looking at options at this stage. I also do not have a clue about what a patent attorney costs and how to file a patent.

Any advice would be much appreciated.

 

[smo]

You cant patent an idea, it needs to be a physical product.

If the US patent doesnt cover UK/Europe then go ahead and try and patent it with your own design.

 

[Gecko001]

I have heard people quote £200-300 an hour for a good patent attorney. You might need one if you plan to take on a US patent.

 

[Chris Ashdown]

No to get a patent it must be original and this is not

Whilst he may have applied for patent in Europe as well and not come through yet but they still retain copyright on the item

If a item is not original when they do their world wide check then no chance of patent

 

[Moneyman]

go see a patent lawyer to see if there is anything new or different.
the first meeting is normally free.

 

You cant patent an idea, it needs to be a physical product.

That is not true,a patent can apply to a process e.t.c.

 

[Gecko001]

That is not true,a patent can apply to a process e.t.c.

Yes it is more than an physical item that can be patented.

A useful link is: http://www.bbc.co.uk/news/technology-23673385

Apparently software is a bit of a tricky one with regards to patents as some countries accept it as patentable and others will not. US accepts it but UK does not.

 

[5abi]

very conflicting information here. I do not plan to patent an idea rather a product however, in my research I found that the product already exists in the US but only protected with US patents. I have done a search myself and there seems to be no protection outside the US, however I am not an expert.

If the individual did do a worldwide search and only applied for a US patent, why does it close the door for me?

I am planning to do a patent application myself without going to an attorney. From what I have seen so far, the slate is clean in the UK and even Europe so why not huh?

Any ideas where I can find a draft or sample of a UK patent application?

It is not a software, but a physical product that will not be obvious in any way until it hits the market.

I did make a call to the UK patent office and they have confirmed that I can indeed patent a product in the UK if it already has a patent in the US. Unless you guys are looking at it from another angle, it seems pretty easy to just go ahead and do it myself.

 

[Gecko001]

I would have thought Chris Ashdown summed it up for you in his post.

The only thing I suggest is that you make the product sufficiently different in some way from the American product so that you can claim it as your own original idea.

 

[David Warrilow]

As a patent attorney I think this thread needs some clarity.

No offence to any of the postees, but there is a lot of incorrect information and evidently a great deal of misunderstanding about patents. Let's take some of these assertions to task:

You cant patent an idea, it needs to be a physical product.

Wrong. Patents protect ideas. You just need to explain one way of making the idea work.

If the US patent doesnt cover UK/Europe then go ahead and try and patent it with your own design.

Patents protect new and inventive products and processes.

New means that the idea hasn't been non-confidentially disclosed before by anyone anywhere in the world.

I presume that the US patent has been published otherwise you wouldn't have found it in your 'quick search'.

Thus whatever the idea is it has been non-confidentially disclosed and nobody else can obtain a valid patent for the same idea.

You may be able to improve upon the original idea and protect those improvements with a patent provided they are new and inventive, but you can never have a valid patent that covers what the US patent discloses.

Whilst he may have applied for patent in Europe as well and not come through yet but they still retain copyright on the item

There might be UK or European equivalent patents that you might be at risk of infringing. You can do free patent searching on espacenet:

http://worldwide.espacenet.com/advancedSearch

Copyright does not in general protect ideas. Copyright protects literary, dramatic, musical and artistic works, but not functionality, which is what any patent seeks to cover.

There are sometimes exceptions, for example if something is a 'work of artistic craftsmanship', but the chances of copyright being relevant in this instance are very low.

Apparently software is a bit of a tricky one with regards to patents as some countries accept it as patentable and others will not. US accepts it but UK does not.

This is a commom misconception. The UK/EU does accept software patents. We file a lot of patent applications for software. For more information on what can be patented see here:

http://www.londonip.com/articles_april_2010.html

If the individual did do a worldwide search and only applied for a US patent, why does it close the door for me?

Because, as mentioned above the idea is no longer new. So nobody can get a patent for the same idea.

Furthermore valid patents can only be granted to the inventor or their successor in title. You can't patent other people's ideas.

This doesn't mean that the door is closed in terms of commercializing the same idea, but you need to ensure that you're not going to infringe any IP rights that might exist.

I did make a call to the UK patent office and they have confirmed that I can indeed patent a product in the UK if it already has a patent in the US.

If they did say that with a full understanding of the situation then that is an appallingly bad piece of advice.

I can only presume that they thought you had filed a US patent and wanted to also file a patent in the UK.

If you want to take a similar product to market in the UK then you need to check you are not going to infringe any third-party rights registered or unregistered.

Patents are territorial rights so the US patent is not relevant, but as mentioned you need to check for other patents and unregistered / registered design rights that might cover the UK.

If you design your own version of the product then you might be able to protect new aspects of that design with either/both patent/design registration.

I hope this clarifies matters somewhat.

Any questions feel free to pm me.

David

 

[Gecko001]

Apparently software is a bit of a tricky one with regards to patents as some countries accept it as patentable and others will not. US accepts it but UK does not.

This is a commom misconception. The UK/EU does accept software patents. We file a lot of patent applications for software. For more information on what can be patented see here:

http://www.londonip.com/articles_april_2010.html

Some software can be patented in the UK, but only some. Business software and other software that does not solve a technical problem are excluded.

The is misconception might have been helped by a certain radio programme on the subject of patents a couple of months ago.

 

[Gotum]

All patents are subject to an international search to see if they are 'original'. I dare say the US patent would come to light during the search. This would prevent the patent office from granting your patent in the UK.

By the way, It only cost about £290 to do a UK patent, regardless of what a so called 'good' patent lawyer tells you. They will simply borrow your watch to tell you the time and charge you a fortune for their mistakes (not implying they make them on purpose

It is much easier to create and submit a patent than others would have you believe. For £50 I'll give you a step-by-step. And I'll give you your money back if it's rejected because it's incomplete.

 

[Swisaw]

1- Develop a good ethical values. When you sign None Disclosure Confidentiality agreement, stick to it, don't mention names. But first do a very good homework, especially before parting with your money.


2- First do all the patent application for your idea by yourself. To learn to do that get details of 'how to apply for a patent from Intellectual Property Patent Office, IPO, at www.ipo.gov.uk.


3- Familiarise yourself with all nuts and bolts of patent applications, especially how to write 'CLAIMS'. 'CLAIMS' are used to distinguish your new idea from previously known ideas, prior arts. You get a patent for what you 'CLAIM' only


4- You have to pay IPO for patent search. That is a legal requirement. So use that for a maximum benefit, for a full search. It is only £120.00 online + another £20.00 online for application


5- To use IPO for full search, use 'CLAIMS' for the full specification of your idea or claim every bits, pieces, nut and bolts of your idea. Don't worry at this stage if some of your claims are not new. You can rewrite the claims later.


6-A- IPO searches in line to what you have claimed, they don't search according to the specifications and drawings. They should find and send you details of any applications, claims, similar to yours. Ideally they should do that 100% but we live in a practical world.
6-B-Before CLAIMS by Patent Office, now Intellectual Property Office, described as meaningful full sentences to distinguish a piece of land beside exactly another piece of similar land. If this is still valid one could claim skillfully a prior art for a new use.

7- When you receive details of the search, change and rewrite your claims accordingly. You can change everything except technical details and drawings. This is a very critical stage. Try to use a patent attorney to do that if you can afford it.


8- European or world patent cooperation treaty bodies are very expensive. To patent abroad use UK IPO, which may not cost anything. First apply in UK and use the date of UK application as the priority date when you apply in any other country. Alternatively apply straight to the patent office of the country, where you want your patent be marketed.


9- Whatever, a patent attorney provides you, should become your property. So if you used one to get a patent in UK and you want to take your patent to USA, you may not need to use a patent attorney again, just use what the patent attorney gave you in UK. If you want take the patent to a None-English Speaking country, use a firm specialised to translate legal documents to translate, what your UK patent attorney gave you, to the language of that country.

10- Try to make a prototype after you applied for a patent and check if it is satisfactory. Try to make the prototype by yourself or use the service of a local small workshop. At this stage CAD or programs to control machines may be too expensive and unnecessary. For my 'A Better Cookware Concept' I have been offered CAD or programs controlling machines, costing from £2500.00 to £30k when all I needed and asked was a prototype model for my own tests.


11- If it is satisfactory, evaluate the competition, production cost and retail price. After that act accordingly, like contacting investors, super markets, manufacturers......etc.
12- UK patent grant only protects you in UK. Others can make and sell the same thing in other countries but they can’t make patent applications.
13- You can use the date of UK patent application as a priority date to apply in other countries within one year from the date of the application.
14- You can apply for a patent in any other countries as long as details of your concept is still confidential. Once the details published or you disclose it, you can not apply for a patent after that.
15- IPO publishes completed applications after 18 months. You can ask IPO not to do so with your completed application.
16- Total cost of a UK patent is £20.00 application fee + £120.00 Search Fee + £80.00 extensive search fee = £220.00 online. That is a peanut.
17- Apart from this £220.00, it doesn’t cost anything more for four years from the date of application. If you couldn’t make something out of it within these four years, you would be better to forget it, don’t renew it.
18- As the last resort, how about following this strategy:
A- Concentrate on UK, forget other countries.
B- To get UK patent to guarantee your monopoly on UK market, try to finish the application as soon as possible to get more time within the four year limit.
C- After getting the patent, disclose full technical details to encourage other people, lets call them counterfeiters, to make it and market it in other countries.
D- The counterfeiters can make it and sell it in other countries but can not patent it. If the product proved commercially viable thousands of new counterfeiters come to the market. This creates a cut throat completion. Most of them get banckrupted and the remainder are going to have a hard time.
E- None of them can make it in or imported to UK without your agreement and each one of them will want to be the first to offer you a best deal to get UK market without competition.
F- On the other hand you can use the success of counterfeiters abroad to get backing to make it for UK market and exported to compete with counterfeiters abroad.
19- You could consider to renew the patent for a few years, which have to be done on the fifth year after the year of application. First year cost is £70.00. After that each year increases by £20.00 over the previous year. It goes like this: 70, 90, 110, 130 . . . to the end.
20- Don’t worry about infringements. Infringements happen by mistake or misunderstanding, which can be rectified without costs. In any case don’t let it to be an obstacle to your ideas.
21- USA patent office offers a sort of provisional application at $150.00 or around £100.00 for a year. Check how to reconcile this with UK patent application to buy time if you want to take your patent abroad after UK.
22- Be careful of the advices to buy the saddle before the horse. I asked them to make me a prototype for my test to prove the concept, they advised me it was better for me to have CAD animation first.
23- Don’t take an idea to the grave with yourself. Let some people to benefit from it.
24- Some major companies accept submitting your ideas relevant to their line of business:
General Electric: http://www.ge.com/contact/submitted_ideas/index.html
General Motors: http://www.gmideas.com/gmideas/ideas
Rolls Royce: http://www.rolls-royce.com/contact/inventors_tech_licensing/submission_form.jsp
Ford Motor Company: https://secure.corporate.ford.com/footer/contact-ford/ford-new-ideas-form

Johnson and Johnson http://www.jjconsumerideas.com/idea-submission-process
A list of other companies: http://inventorspotforum.com/viewtopic.php?t=60

 

[superdooper500]

All patents are subject to an international search to see if they are 'original'. I dare say the US patent would come to light during the search. This would prevent the patent office from granting your patent in the UK.

By the way, It only cost about £290 to do a UK patent, regardless of what a so called 'good' patent lawyer tells you. They will simply borrow your watch to tell you the time and charge you a fortune for their mistakes (not implying they make them on purpose

It is much easier to create and submit a patent than others would have you believe. For £50 I'll give you a step-by-step. And I'll give you your money back if it's rejected because it's incomplete.

Sometimes it is worth it to get a professional to do things for you. If you don't value your time, you can achieve anything. I could build my own house if I wanted, but I'd rather employ a builder. I could do my own accounts if I wanted, but I'd rather employ an accountant. You only live once, your time is limited, why waste it on trying to do things 'on the cheap', you can't take money with you, or get the time back that you waste on trying to do everything yourself.

 

[Swisaw]

Sometimes it is worth it to get a professional to do things for you. If you don't value your time, you can achieve anything. I could build my own house if I wanted, but I'd rather employ a builder. I could do my own accounts if I wanted, but I'd rather employ an accountant. You only live once, your time is limited, why waste it on trying to do things 'on the cheap', you can't take money with you, or get the time back that you waste on trying to do everything yourself.

It is not us, it is our hands. They are too mean to open our fat pockets.


To the Mods: sorry for the repeat of the same post. If possible please remove the first one.

 

[superdooper500]

It is not us, it is our hands. They are too mean to open our fat pockets.

You joker!

 

[Chris Ashdown]

I would disagree about the simplicity of doing the application yourself as the Description needs in many cases to cover a very wide range and can cause problems for instance I patented a new life saving item which unfortunatly never took off but did get the patent

In the description I would have stated the boyancy aid is made from rubber and aprox XX Length and XX Width enclosed in a plastic container

The Agent I used suggested something like the boyancy aid is made with a membrain that typically could be made from a rubber based material or non poruse material and the container made from materials simular to a molded plastic or metalic fitting

Not the exact words but every part has to be described in the widest description otherwise something like a football could have been patented as made of leather and some bright spark may have made on of man made material and broken the patent

 

[Swisaw]

I would disagree about the simplicity of doing the application yourself as the Description needs in many cases to cover a very wide range and can cause problems for instance I patented a new life saving item which unfortunatly never took off but did get the patent

In the description I would have stated the boyancy aid is made from rubber and aprox XX Length and XX Width enclosed in a plastic container

The Agent I used suggested something like the boyancy aid is made with a membrain that typically could be made from a rubber based material or non poruse material and the container made from materials simular to a molded plastic or metalic fitting

Not the exact words but every part has to be described in the widest description otherwise something like a football could have been patented as made of leather and some bright spark may have made on of man made material and broken the patent

If you had a bit of business, marketing and competition you wouldn't have wasted your money on something no one needed it.

 

[Chris Ashdown]

If you had a bit of business, marketing and competition you wouldn't have wasted your money on something no one needed it.

I assume you fully read my patent and understood it before you made your comments

Without money to spend on manufacture, and being told by compertition that it would effect their present sales as their goods were more expensive if they took a licence and if i went alone and it looked to be in high demand they would buy me out (catch 22)

To protect your idea you need a patent but bringing any new item to market has very high costs and 30 years ago there was no such thing as Crowdcube etc to easily raise money

On what basis do you say it was not needed, you are a expert on life saving I take it

 

[Gotum]

Sometimes it is worth it to get a professional to do things for you. If you don't value your time, you can achieve anything. I could build my own house if I wanted, but I'd rather employ a builder. I could do my own accounts if I wanted, but I'd rather employ an accountant. You only live once, your time is limited, why waste it on trying to do things 'on the cheap', you can't take money with you, or get the time back that you waste on trying to do everything yourself.

Guessing you're a patent agent

 

[Swisaw]

I assume you fully read my patent and understood it before you made your comments

Without money to spend on manufacture, and being told by compertition that it would effect their present sales as their goods were more expensive if they took a licence and if i went alone and it looked to be in high demand they would buy me out (catch 22)

To protect your idea you need a patent but bringing any new item to market has very high costs and 30 years ago there was no such thing as Crowdcube etc to easily raise money

On what basis do you say it was not needed, you are a expert on life saving I take it

Every one agree with your argument regarding new invention cost and complication. But your invention, although you got a patent for it, commercially was not worthwhile your cost. Because there are a lot of products in the market for the same purpose. Assuming yours had a commercial success, this would have brought to the market imitators with cheap versions to kill your share of the market. It would have been made from plastic or rubber of similar, which means it would have been easy to make. so every fly counterfeiter would have made some thing similar but a bit different from the shape of yours without patent costs. You must have got your patent for the shape of your idea, not for the floating property, which is something can not be patented.

 

[Karimbo]

if it was allowed then I imagine there would be lots of scum patent companies that will just re-register other peoples patent as their own in another country.

If the idea (or implementation of the idea) is the same as someone elses patent by another from a company who holds the patent in a different country I guess you will need to prove that you came to the same product using your own r&d and be able and willing to prove it.