Help with steps patenting an invention

[Pam B]

I am new to the forum and am looking for advice please.

I have an idea for a new product, which I believe is unique. I have provided a company with designs of my product (we have a confidentiality / non-disclosure agreement in place) and I have paid for them to undertake a worldwide patent and product search to ensure there is nothing similar already on the market. From my own research using espacenet I don’t believe the product currently exists.

I would be grateful of hearing what the nest steps are please. I believe them to be the following but am happy to be corrected.

1.) Conduct the worldwide patent and product search (currently awaiting the results of this);

2.) If there isn’t anything similar then design a prototype of the product;

3.) Submit a patent application (As I would wish my product to be sold worldwide I would like to have an international patent but do I apply for the UK patent first?)

4.) If I have ‘patent pending’ does this then enable me to contact companies with a view to me licensing my product to them or do I have to wait for the patent to be approved?

Thank you for any advice.

 

[JBBusinessSolutions]

You are correct in almost all aspects written in your post.

In relation to the last two steps of your process you do not need to apply for a uk patent before applying for a worldwide patent and once the application is pending you are entirely right to be approaching companies because as soon as your patent is pending application it means nothing in the earth is like that product and it may take sometime for your patent application to be completed.

I hope your venture does well.

If you looking for a distributor give ma shout as I am own a marketing and promotions company in Glasgow.

Thanks,

 

[K-rado]

Hold on there me ole china. I am not sure on the validity of the above advice. I am fairly sure that if you are based in the UK, then you must submit an application to the IPO before you can file for international patents. International applications ( not worldwide as in the strictest sense there is no such thing) can very very expensive even just to file without first getting the searches done properly with the first application. My advice would be to speak first with a IP solicitor. your first 1 hour consolation will be free and you are sure that the advice will be good! not to mention that they must carry professional liability insurance!!
You can file a patent application that will give you priority so you know that your "idea" invention, inventive process is yours and yours alone because signing a NDA is not always all encompassing especially if the co that you are developing it with sees potential and or value by a change modification, then they will file an application based on that improved modification. I have been there a few times and even filed my own applications and claims and it is a Legal issue and you must get it right.. My advice, Take the FREE advice first.. Hope this helps, K.

 

[Pam B]

Thank you for your advice above.

At present I'm waiting for the results of the patent search to see if there is anything similar to my product.

I think my next best course of action, but again happy to be corrected, is to wait until I hear what the results of this search is and then speak to a IP solicitor (or Patent Attorney?) if I don't know how best to proceed next.

Surely if nothing similar currently exists the next stage is to get a prototype designed and then a patent application submitted?

My dilemma is at what stage is it best to begin contacting companies with a view to them licensing my product as I would not wish to produce it myself and instead receive royalties from the sale of the product?

The 'patent pending' stage is quite late, i.e. after the cost of paying for the design and building of a prototype and the submission of the patent application.

 

You do not need to build a prototype for patent submission.

You may not need a working model if the idea is evidently workable.

Have you researched the market demand for your product.?

Earl

 

[Dave.F]

Hi Pam,

Have a read of my methodology: http://www.swimglows.com/methodology/

Hope it helps?

Dave.

PS who is doing the "patent search" for you, the IPO or other?

 

[Pam B]

To me the product is evidently workable without a prototype. However I believe with some patent applications they require dimensions etc and this is why I thought it best to have a prototype designed first.

I just can’t believe there is nothing in existence like my product but I have ‘googled’ this endlessly and variations of the product and have not found anything.

The initial feedback from the company doing the patent search is that there would be demand for my product (being the cynic though, they would say that though wouldn't they) and I believe there would be phenomenal demand for it around the world. However, how can you actually quantify what the demand is when I’m only at this stage with an idea?


Thank you Dave. I’ve sent you a private message.

 

[Dave.F]

Pam you have a PM.

 

[Swisaw]

If an idea has security/military implication, you must get UK patent Office permission to take it abroad. Otherwise there is no problem.

A view:

Why one to apply to world patent treaty or European patent tready to get worldwide patent protection because it is very costly and practically it is not necessary. You can use UK Patent Office the same way, it is a lot cheaper and you can use your UK patent application to apply in other countries. In this way, you save over a thousand quid on your patent application.

 

[ammi123]

you have shared really very informative information which really helps to other i like your all words which you mentioned .. thanks

 

[K-rado]

Hi Pam,

Have a read of my methodology: http://www.swimglows.com/methodology/

Hope it helps?

Dave.

PS who is doing the "patent search" for you, the IPO or other?

Hi Dave.F. Just had a look at your website www.360trades.com Very cool indeed and "sound" advice . K

 

[Pam B]

Thank you Swisaw. My product does not have security/military implications.

I had been under the impression that unless I had an international patent then my product could be copied abroad. So can I confirm what you are telling me please and that is if I have a successful patent application granted in the UK then nobody can legally copy it in the world?

Or is there something I need to do in order to ensure it applies in other countries?

If an idea has security/military implication, you must get UK patent Office permission to take it abroad. Otherwise there is no problem.

A view:

Why one to apply to world patent treaty or European patent tready to get worldwide patent protection because it is very costly and practically it is not necessary. You can use UK Patent Office the same way, it is a lot cheaper and you can use your UK patent application to apply in other countries. In this way, you save over a thousand quid on your patent application.

 

[K-rado]

Thank you Swisaw. My product does not have security/military implications.

I had been under the impression that unless I had an international patent then my product could be copied abroad. So can I confirm what you are telling me please and that is if I have a successful patent application granted in the UK then nobody can legally copy it in the world?

Or is there something I need to do in order to ensure it applies in other countries?

Hi Pam B. I am sure Swisaw will respond. Just a pointer though. A lot of inventors (imho) confuse patents with products and visa versa. More often than not, they are 2 different things that has been developed to create something useful. A Patent concentrates on the technology or process and this is key with respect to the function of a useful Product. If you have a patentable idea e.g a bicycle and assuming that it has never been done before, you may think Hmmmm. Wouldn’t it be great if we could get around on wheel using our legs to power up a hill and free wheel back down the other side. What you would do then is sketch how you would believe it would work. You would then make a claim, the section that identifies your idea to be original or novel for example, a toothed crank 1 as identified in drawing A, that rotates around an axel 2, that is rotated by means of engaging a leg in an alternative fashion as identified in drawing B that is connected to a chain 3, that is subsequently connected – and so on and so on. The claims must be precise and not the same as any other claim in any other granted patent or known process. This is the real legal section and must be done correctly. if granted, you can now develop a product that you will now call a bicycle. It can look like whatever it likes, A Product that you can now sell. With respect to the claims, Make sure you cover everything you can think of otherwise others may look at it and think, hang on, they are missing a trick here and file a better patent application , by installing an engine and developing a product called a motorcycle or adding 4 wheels and calling it a Car.

Now ask yourself, where is the biggest market for your invention and subsequent product? Yes, thats right, you don’t know! Your idea/patent is so new that there is no market for it so therefore you must create it. And that’s one of the most important bits. See, you can have a patented granted, but if you cannot convert that into a saleable product, or develop a market, or that market that you have shoehorned yourself into is to small or unsustainable, then was it worth all that hassle, grief and investment? That is why, again IMHO, the first thing you should do is 1) Take your IDEA out of our head and put it down on pen and paper. (DO NOT DISCLOSE IT TO ANYBODY)
2) Sketch it up to see how it will work. 3) identity what problem it solves or what the improvement over existing patents, processes or products that address a similar issue. 4) get it all straight and clear and file an application called self propelled wheeled device for transporting people, or an improved self propelled wheeled device. 5) then go to a patent attorney to develop drawings, descriptions’ and those all important claims, 6) Request a search from the IPO, 7) discuss the results with your attorney
8) modify if necessary and then carry out a full market appraisal of the new product i.e where is the money. You now know where the markets are for your product ( and this may be only on the UK, take a 3 pin plug for example and as such no need to go to the expense of filing a patent application in other countries) 9) develop a protype and drum up some sales market research, consumer testing, opinions etc.


Sorry, I know it is a little ling winded, but there is no hard and fast rule to patents or new products. What I said earlier is the real value is in the IP. And this has to come from somewhere. i.e it has to be generated. You have all sorts to think about with new inventions, products, IP and so on. And you need to take it step by step. Please. Speak to a patent attorney for some free advice firstly. Then you will be a lot clearer on the implications, success rates, costs and stages that will need to be followed.

Again, Hope this helps. K

PS, its a massive subject and people have written books about this kind of thing. Phew!

 

[Dave.F]

Great advice there K-rado

A patent is worth nothing if nobody wants the product it is protecting.

If your invention is desirable and profitable, the patent that protects it, has a value.

Dave.

 

[Swisaw]

Thank you Swisaw. My product does not have security/military implications.

I had been under the impression that unless I had an international patent then my product could be copied abroad. So can I confirm what you are telling me please and that is if I have a successful patent application granted in the UK then nobody can legally copy it in the world?

Or is there something I need to do in order to ensure it applies in other countries?

Unfortunately UK patent grants don't protect you in other countries. The same thing applies in every other countries as far as I know. But there is advantages to apply in UK and use it as a priority for your application in other countries. In this case your UK application, without going further, could cost you nothing. Obviously if you want to get a grant in UK it will you cost you under £300.00 if you can do it by yourself, in which case you can do it only if you are very familiar with patent application requirements of wording your claims.

If you want grants in more than one country, you have to do it within one year using your UK application as a priority from the date of UK application. Another trick is to ask Patent Office not to publish your application. I am not sure but as far as your application not published, you can apply in other countries any time. But be sure of this point before using it.