Intellectual Property - which route does one take?

[Spearmint]

Does anybody know if there is a 'nice & simple' flow chart that's available to help an inventor decide which is the best IP route to take, which covers both UK and international countries, which is likely to help one decide on whether to apply for a patent or a registered design. One with approximate costs for each step would be even better, but I've trawled the internet to try and find such a document but to no avail.

Presently, I'm really in a dilemma on which path to take, I have a logical mind and it would help if I could see a flow chart to help me decide on what to do, but I have really found this subject tricky to say the least!

In the absence of such a document, maybe I should scrap my invention and produce a marketable IP flow chart that all potential inventors could refer to, but I'd need to refer to a different and unavailable IP flow chart on how to protect that with IP!

I'd appreciate any replies on this subject.

Peter

 

[IP Consultant]

Peter

I do not have a flow chart as such, but I am more than willing to give you some of my time to advise you on suitable forms of IP for your idea.

Best wishes
Matthew

 

[Spearmint]

Hi Matthew - Thank you for your reply. To be honest with you I have already approached a Patent Attorney, so I have had the benefit of some preliminary free advice although I must admit I left the meeting kicking myself on other questions that I should have asked. That was back in March, and I'm still in a dilemma as to which way to go.

If I refer any further questions back to the PA that I initially approached, I'll be charged for it, but I'm still undecided on whether to apply for a patent or go for a registered design.

My invention does have a function, but to me its simple, and I'm not so sure that its likely to meet the fundamental requirements of a patentable product, particularly in respect of it being novel, and on that basis its left a huge doubt in my mind as to whether a patent application is the way to go.

Furthemore, I also did a search on the IPO website to try and establish the number of patents that get granted in any one year, and it was very low, and that didn't give me much confidence either!

However, trying to look on my invention positively, I'm a pessimist by nature, but even I'm confident that my invention would be popular and sell but at the same time, without the right IP protection it is very easily copied, and I'm sure that its still likely to be copied if I do acquire a patent on it.

As I've already approached a PA, it wouldn't be ethical in my mind to approach others to keep getting free advice, but I do feel as though I've been left with a problem, that I can't solve! I don't have a great deal of money to play with, and I feel that I must use what I have wisely. It would be a different kettle of fish if I had some financial backing but I can't apply for any backing, for I need to keep my invention secret, as it could jeopardise any patent application, unless I use non disclosure agreements, so it's all back to me again!

I do want to make progress with it, but the IP factor has become a huge stumbling block for me, but I do need to decide what to do as there is a lot more to be done to get the product out there. That's the bit I'm looking forward to.

Peter

 

[Nick Dougan]

Dear Spearmint,

There are a couple of resources that sound a little like what you might be looking for.

This one is definitely in the "nice & simple" category:

http://www.bb-ip.com/index.php/flowchart/

This is rather more involved, and is more about the time that various types of IP application might take rather than a decision making process about which types.

http://www.withersrogers.com/ip_resources/timelines

I'd welcome your feedback as to how useful that is - pm me if you'd like - and if it's not what you're looking for I might be able to arrange for something better to be written (one of my clients in a patent and trade mark attorney).

Nick

 

[Spearmint]

Hi Nick

Thank you for your posting.

The nice and simple BB link was probably too simple but would be of interest to someone who is new to patents, but I've looked into it beyond that.

The other link was quite interesting and I spent some time studying that one. It didn't quite answer my question for it probably lacks the approximate costings that go with each route, but it does portray the complexity of the route that one can take. Thank you

Peter

 

[Nick Dougan]

Thanks for that Peter.

So ideally you would like a chart or series of charts that includes costs (which is quite difficult because they are so variable, although that's no excuse not to try), timescales, and international options as well as a simple British application.

And going back to your original post, you'd like a chart that shows the factors that would affect the decision as to whether to pursue patent and/or registered design registration?

Anything else - I am interested as I'm always looking for new topics to write about!

It also sounds as if you need an aide-memoire as to whether something is patentable. That can be covered generically, such as http://www.bb-ip.com/index.php/what-is-patentable/, but any more specific advice will have to be given in knowledge of the prior art in the area you're working. That bit of the process would be most difficult to turn into a flowchart; whether a develpment meets the standard of being novel and represents an inventive step is a judgement that is sometimes not easy even for an experienced attorney. If you doubt the novelty yourself then - if I may venture - then my guess would be that you're probably right. That's where conducting a search comes in, and that would represent your first significant expenditure.

There are of course ways to get products to market without IPR. That requires speed and secrecy - and for you would be all about finding the right partner. There are some web-based organisations out there that help facilitate that, and you'll find reference to some of them elsewhere on this site. It's not an area that I've any experience of myself, but I am intrigued by it.

 

[Spearmint]

Thank you for your reply Nick.
Based on your reply I reckon you must have read that new thread that I posted about patents v registered designs, which gave you more of an insight into my problem, which you indirectly referred to, but your reply was right.

An intriguing subject it is indeed, but its been quite a stumbling block for me, and I'm starting to believe now that I must forget about the patenting option and move on. You may have hit the nail on the head; as there are doubts as to whether I can succeed with the patenting route, and I now need to decide which is the best alternative IP protected route to take, based on what I'm prepared to pay and the risks associated with a new product, and one in which its success has yet to be tested. No pressure really!

The IP search is yet another risk and costly. Yes, it could save you money in avoiding future litigation, but after my own extensive searching already, I believe that I only have one possible USA based competitor which I believe is of low risk for it is significantly different (in my opinion).

However, I have been advised that if that patent gets granted and my invention contravenes any of the claims of that item, then I could still be liable to pay damages going back to the date when I first put my invention on sale even if its before the date that my competitors patent was granted.

Your final paragraph was of significant interest to me as well, and I'd appreciate it if you are able to elaborate on it. Because my invention is simple, cheap to make, and effective it will be easily copied, and I have put considerable thought into the best marketing strategy for it once its launched. The solution in my mind has been the same every time - it needs bringing to the market quickly both here in the UK and internationally, but I'm not going to be able to do that without help.

I'd love to be able to say that I've invented the next Rubiks cube or the next generation of cats eyes but I haven't, but I'm confident (remember I'm a pessimist by nature) enough to know that I've invented a product that does have significant market potential but this is yet to be proven.

I noticed that you like to write about new topics, and I wondered what you do with your reports once you've written them.

I appreciate your comments

Peter

 

[IP Consultant]

Hi Peter

Regarding getting advice from a patent professional, I do not feel you are yet straying into the realm of unethical/unreasonable behaviour by simply speaking to more than one patent professional before appointing one. I know that when I am looking for an accountant or other service provider I tend to speak to a few before making an informed decision. Therefore, my offer of a complimentary consultation stands.

I note you doubt that a patent would be granted for your invention. Registered designs have correctly been raised by Nick as another IP option. If you are considering seeking both a patent and a registered design in relation to different aspects of a product, you should ensure the design application is not published before the patent application has been filed, as that could be fatal to the patent.

However, a utility model (or secondary patent) would be a closer option to a standard patent. I should say immediately that a utility model is not available in the UK, but it is available in more than 15 other European countries, as well as other countries further afield, and it is often available via the international patent application route.

Best wishes

Matthew

 

[jules12345]

Hi Peter

Regarding getting advice from a patent professional, I do not feel you are yet straying into the realm of unethical/unreasonable behaviour by simply speaking to more than one patent professional before appointing one. I know that when I am looking for an accountant or other service provider I tend to speak to a few before making an informed decision. Therefore, my offer of a complimentary consultation stands.


Best wishes

Matthew

lol

8 years to become a patent attorney and hes offering free advice and the OP isn't interested ...!

Regards
Jules

 

[Nick Dougan]

lol

8 years to become a patent attorney and hes offering free advice and the OP isn't interested ...!

Regards
Jules

Julien,

With due respect, I'm not sure that that is a fair comment at all. Not sure that the time taken to pass exams has anything to do with it - some very good patent attorneys take a while to pass all their exams, and not everyone who passes quickly turns into a good attorney. It is, let me assure you, a rather more onerous route to qualify as a patent attorney than it is to do so as a solicitor - I've seen both processes in action.

N

Regards

Nick

 

[Spearmint]

That's all I need!

A legal tiff in the midst of my thread! lol

 

[captaincloser]

As Deborah Meadon has just said on Dragons Den... 'I have watched many people rack up fees of £40-50,000 without obtaining a patent.' I too have seen many, many people who have lost their shirt by fooling themselves that they have something new...some do but they will be a fraction , a tiny fraction of 1% of all 'inventors'.

Your own doubts mentioned on this thread are also alarm-bells you should listen to.

Something else that I notice, often, and you won't like this, is that inventors are very often 'special and different' and of course none of us are special and different. There are many out there who will flatter you right up to the limit of your overdraft. There is nobody in the 'invention' business who will have the nerve to dispute this assertion.

Be wary and bear in mind the road to patent success is fraught and a fool and his money are very easily parted and more often than not are in this particular world. Its a brutal business.

 

[Spearmint]

What you've said is absolutely right. I know someone myself who was relying upon an invention idea, and sank a lot of money into it. He got the patent in the end but that's about as far as it got. He has lost money on it, and as a consequence is still having to work longer than he thought.

I do have concerns on whether my invention (I hate calling it that) is patentable, and I'm pretty reluctant to throw too much money into it, particularly as my idea is very easily copied, and even if I had a patent one has got to defend it, which in turn costs more money!

I didn't get offended by your comments about inventors, in fact, I don't really consider myself as an inventor, but I did discover something which I'm intending to market, but I'd like to think that I'm approaching it all cautiously.

Peter

 

[David Warrilow]

Does anybody know if there is a 'nice & simple' flow chart that's available to help an inventor decide which is the best IP route to take, which covers both UK and international countries, which is likely to help one decide on whether to apply for a patent or a registered design. One with approximate costs for each step would be even better, but I've trawled the internet to try and find such a document but to no avail.

Presently, I'm really in a dilemma on which path to take, I have a logical mind and it would help if I could see a flow chart to help me decide on what to do, but I have really found this subject tricky to say the least!

In the absence of such a document, maybe I should scrap my invention and produce a marketable IP flow chart that all potential inventors could refer to, but I'd need to refer to a different and unavailable IP flow chart on how to protect that with IP!

I'd appreciate any replies on this subject.

Peter

Hi Peter

I'm a patent attorney at London IP.

We have such flowcharts for patent protection and ones for UK and EU design protection (not international - but that is easy to explain).

If you would like me to send them to you please pm me. However these documents should not guide you as to which form of protection is appropriate.

Whether to choose patent or design protection largely depends on whether you wish to protect functionality or aesthetics. If you wish to protect functionality then patent protection is appropriate. Design protection does not protect parts of a design dictated by their technical function, e.g.:

http://oami.europa.eu/ows/rw/pages/OHIM/OHIMPublications/newsletter/1001/RCD/rcd1.en.do

Evidently the belt and braces approach is to do both patent and design registration...

David