Patent application drafting & filing costs

[prophet01]

Ciao folks, not been on here for a few years

Essentially, over the last month or so I've been refining a prototype for a product I've "invented" which appears, following numerous prolonged searches, to be new and original and which I intend to have manufactured for sale.

Having researched aspects of Intellectual Property protection I arrived at the conclusion that filing a UK patent application would be the best way forward but decided to get some professional advice. As such I arranged an initial meeting at one of the UK Patent Libraries. On demonstrating my invention to the advisor he immediately suggested that I arrange a one on one appointment with a patent attorney for that afternoon's patent clinic.

On demonstrating the invention to the patent attorney he confirmed that the invention was "eminently patentable" and we proceeded to discuss the patenting procedure.

To cut to the chase, having considered the advice, I requested an estimate from his company. The estimate for "drafting and filing a UK patent application for your invention with a request for search" was over £4000 and to be paid in advance.

As my invention is unbelievably simple, no moving parts and comprising just three components, my initial thought was that the estimate appeared rather excessive. Having no previous experience in this field I'd be grateful for the views of others more knowledgeable.

 

[Swisaw]

Intellectual Property Office has guideline to help how to draft an invention, make claims, write an abstract and make application.
https://www.gov.uk/government/organisations/intellectual-property-office
Patent atorney may cost a lot more than £4K.

 

[Deleted member 226268]

As my invention is unbelievably simple, no moving parts and comprising just three components, my initial thought was that the estimate appeared rather excessive.

.

You will have to decide for yourself just how valuable your "Widget" - might - become in the future.

Obtaining a patent is a long and costly journey.

which appears, following numerous prolonged searches, to be new and original
Someone - Somewhere, has probably already thought of it.

https://ipo.blog.gov.uk/2015/06/05/patent-pending/

Will a lot of people potentially buy it, because it is a generally useful object for everyone,
or is it a bit of a specialist object for a narrow market.

Will it sell in the millions ?
If it has that potential, and it is really simple to copy and manufacture, then eventually it will be copied by the thousands and shipped in from China by the container load, and sold at half your production cost.
Irrelevant if you have a UK patent or not.

I would just obtain a Registered Design for £ 60, to permanently identify the Widget as yours,
and your own design, and then try to sell as many as you can.

But then, it will not be possible to apply for a patent later.

.

 

[prophet01]

Appreciate the responses guys:

Swisaw, I daresay I cold put together a passable application, however, I'm pretty certain there's much more to perfecting an application than is instructed in the guidelines.

MIE, I chose my words carefully. "Which appears" already suggests my acceptance that someone else may have thought of it but my failure to find one, or anything that will do the same job,suggests that even if someone had thought of it they haven't progressed it further. I have already undertaken searches but I would expect that to be done more thoroughly by the attorney also.

It is an item which has an application in pretty much every household, so yes, potentially millions just in the UK alone. I understand the protection limitations of Patent Pending but I believe it'll be worth it in the long term. I do intend, once the application is submitted, to go into production and release to market.

My initial query surrounds my, possibly incorrect, perception that the quoted cost is unnecessarily excessive in addition to requiring the whole of it to be paid up front. I would have expected advance stage payments.

I shall speak with and request quotations from other attorneys.
Thanks again for the input.

 

[The Byre]

What is to stop you from performing all the on-line searches?

I mean, after all, you will know what to look for, far better than any lawyer!

 

[Swisaw]

If it doesn't have moving parts and it is a household item it may be something used in the kitchen.

Just do the drafting and application by yourself. Ensure you know how to make claims correctly. Let Intellectual Property Office to do first search. If nothing similar found and if you are sure the invention has a strong demand it may be worthwhile to use patent attorney to take over the application. £4k for patent atorney is really cheap, but who knows you may find some one a lot cheaper. I think some companies do drafting for some something under £1k, google for them.

Good luck

 

[Swisaw]

I just remembered I used to provide the following advices to inventors:

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.

__________________

 

[john1989]

@FrazerBye works in this field, I believe.

 

[prophet01]

The Byre: I've done what I believe to be a fully extensive search but the attorney might find something I didn't.

Swisaw: Fantastic information. I'll read and digest more thoroughly later.

John1989: Thanks for the info. I was hoping I might find some recommendations.

 

[F_B]

Thanks @john1989, I'm training to be a UK and European patent attorney. I'm currently on paternity leave so apologies if this is a bit brief.

Patents are considered to be the king of IP as, if granted, provide a 20 year monopoly to prevent anyone else from performing the invention. In return, the government want a full and complete disclosure of how the invention works. This is intended to encourage innovation as after the 20 year period (or earlier if the application is published but fails, or the renewal fees are not paid) the teachings of the patent are then free for anyone to use.

To obtain a patent your invention must fulfill three criteria:
1. It must be novel (I.e. not done before).
2. It must be inventive (I.e. not a trivial amendment or obvious given what has gone on before)
3. Must have industrial applicabiliy -you can make and sell a product.

£4000 (for preparing, filing and requesting search) seems a bit high for a straight forward mechanical invention, unless the attorney has noticed something unusual. I would urge caution with regard to drafting your own application. If you do note that you cannot add matter. Any subsequent amendment must have basis in the application as filed. So, your initial submitted draft must have everything in it you intend to rely on for prosecuting the application to grant. You cannot add key feature to the claims if it is not present in the description.

The claims of a patent specification determine the scope of protection. The claims are interpreted using the description and drawings.

If you do draft your own specification I recommend going back to the patent clinic and asking the attorney the review your claims and spec.

Alternatively I'd be happy to pm you my colleagues details and they will happily give you an hour of their time to assess your needs and provide an appropriate cost estimate.

A note of registered designs: these are limited to the exact shape or your design. Any design which creates a different overall impression on an informed user (e.g. such as changing a pulley and belt for a chain and sprocket drive) will call outside the scope of protection.
Designs have the following exclusions:
1. Internal parts are excluded unless seen by the end use during normal use. Such as a washing machine drum would be protected (as seen when the user is loading washing), but the PCB controller would not (as only seen by a technician if there is a fault).
2. Any part of your design which is intended to fit or cooperate with another product is excluded.
3. If your design is dictated by its technical functionit is also excluded from protection.

 

[prophet01]

Frazer, many thanks for your response.
I have an appointment with one of your colleagues this morning.

 

[prophet01]

Update:

Ciao folks

I'm pleased to announce that my patent application has been filed with the UK IPO.
As a result of the ( much appreciated) advice given on this thread I decided that using a patent attorney would be the best way forward and with the application eventually stretching to 20 pages long I'm so glad I did.

Prophet

 

[Deleted member 226268]

Update:

Ciao folks

I'm pleased to announce that my patent application has been filed with the UK IPO.
As a result of the ( much appreciated) advice given on this thread I decided that using a patent attorney would be the best way forward and with the application eventually stretching to 20 pages long I'm so glad I did.

Prophet

Did this include a patent search ?
How much did your patent application cost ?

 

[prophet01]

No it didn't. I searched extensively myself and supplied the attorney with my findings.
Cost of application drafting and submission was £3000.

Money well spent in my view.

 

[Deleted member 226268]

Money well spent in my view.

£ 3000 ..... Scary
You should really have asked for a professional patent search first, before proceeding with the application.
But you don't actually have a patent yet, only a submission.
I hope this Widget is going to be worth the costs....


As my invention is unbelievably simple,
...item which has an application in pretty much every household

Copies arriving from China soon !

 

[Chris Ashdown]

I used a patent company and they did a good job , but you must remember that thay make there living by filling in applications so a double edged sword, they are there to help you and at the same time help themselves.

The most difficult area is the description, you may write this item made of steel and does xxxxx is ok but then someone comes along and makes one of Brass or and new plastic which circumvents your design

A Patent is fine but you need to have the money to fight others copying the item, it comes under civil law so nobody to help you and if its a very good item with millions of sales could you afford to fight a massive plc and your patent id only valid in the companies you pay for so you may not have much power to stop say a Chinese company making copies of them

What a patent will do is give you something so that you can licence another company to make and sell them for royalties and they may have the power to fight off other companies

 

[F_B]

Congratulations on the filing of your application. If it has been well drafted, the specification should be resilient to anything found by the UKIPO. Normally there is some scope of protection to be had.

Do look into the Patent Box scheme, products sold that are covered by a granted UK patent can benefit from a reduction in corporation tax (to 10%).
https://www.gov.uk/guidance/corporation-tax-the-patent-box

 

[prophet01]

£ 3000 ..... Scary
You should really have asked for a professional patent search first, before proceeding with the application.
But you don't actually have a patent yet, only a submission.
I hope this Widget is going to be worth the costs....


As my invention is unbelievably simple,
...item which has an application in pretty much every household

Copies arriving from China soon !

Dave
£3000 - Scary to you it would appear. For me it's a carefully considered and calculated risk. We all have different levels of risk aversion. Were I a gambling man, which I'm not, I would have the sense not to gamble any more than I could stand to lose.

I'd expect copies to be made but that's an issue to be managed with the available tools when it occurs. I certainly wouldn't let that dissuade me from moving this project forward. My first milestone has been achieved - Patent application is in - one step at a time.

 

[The Byre]

£3,000 can get you a great deal or very little. It is the price for one single Neuman M149 microphone, or a used 2007 Honda Accord. It is the price for a bottle of premium Stoli Vodka or 300 bottles of Lidl's gin!

What would I rather have? A bottle of vodka in a sexy wooden case or 'patent pending' on a transformative product?

I'll go with the patent and have another glass of my home brew! Congratulations!

And cheers!

 

[Swisaw]

20 pages for something simple without moving parts.

 

[suitontherun]

The British Library Business and IP centre (where I am based ) offer free advice on anything IP/Patent related. Come here as first step!

 

[prophet01]

£3,000 can get you a great deal or very little. It is the price for one single Neuman M149 microphone, or a used 2007 Honda Accord. It is the price for a bottle of premium Stoli Vodka or 300 bottles of Lidl's gin!

What would I rather have? A bottle of vodka in a sexy wooden case or 'patent pending' on a transformative product?

I'll go with the patent and have another glass of my home brew! Congratulations!

And cheers!

Very well put, cheers to you too.

 

[prophet01]

20 pages for something simple without moving parts.

Indeed. I was somewhat taken aback also. Hope it's not just padding.

 

[prophet01]

The British Library Business and IP centre (where I am based ) offer free advice on anything IP/Patent related. Come here as first step!

That was my first step back at the beginning of the thread. I initially had a meeting at that time at the Birmingham Library IP centre who then arranged a consultation with an attorney later that afternoon. That's where it all started.

Coincidentally, last night I was contemplating booking a "one to one" LBSS advice clinic session, as advertised on your website, on 5th October. My next step being to seek advice on manufacture, marketing and sales strategy. I'd appreciate your view of the advice clinic.

 

[Sondros123]

Ciao folks, not been on here for a few years

Essentially, over the last month or so I've been refining a prototype for a product I've "invented" which appears, following numerous prolonged searches, to be new and original and which I intend to have manufactured for sale.

Having researched aspects of Intellectual Property protection I arrived at the conclusion that filing a UK patent application would be the best way forward but decided to get some professional advice. As such I arranged an initial meeting at one of the UK Patent Libraries. On demonstrating my invention to the advisor he immediately suggested that I arrange a one on one appointment with a patent attorney for that afternoon's patent clinic.

On demonstrating the invention to the patent attorney he confirmed that the invention was "eminently patentable" and we proceeded to discuss the patenting procedure.

To cut to the chase, having considered the advice, I requested an estimate from his company. The estimate for "drafting and filing a UK patent application for your invention with a request for search" was over £4000 and to be paid in advance.

As my invention is unbelievably simple, no moving parts and comprising just three components, my initial thought was that the estimate appeared rather excessive. Having no previous experience in this field I'd be grateful for the views of others more knowledgeable.

I personally think 4 grand is expensive,and perhaps they are not all the same and perhaps yours is a patentable idea, but they are there to make money.
Have you tried invent4 free and nomim nothing to do with them, the con usually is the X amount for a search but they did not do that.

 

[Deleted member 226268]

Dave
£3000 - Scary to you it would appear. For me it's a carefully considered and calculated risk. We all have different levels of risk aversion.

Yes I agree, it does depend on how much confidence you have in the product, that it will sell
in sufficient quantities, to be worth the initial costs.
.

 

[David Warrilow]

As a director of a firm of patent attorneys I know that we have charged £1000 to £5000 for a UK patent draft/filing depending on the level of complexity.

£4000 is expensive (from my point of view) for something with no moving parts.

I would expect it to be more in the £1000 to £1500 region.

 

[prophet01]

I took my invention to three patent attorneys for quotations. I accepted the lowest at £3000. It was a take it or leave it situation. I took it because of the level of confidence I had, and continue to have, in my invention.

That £3000 would have been sitting in my bank account along with the other £XXX,000 not doing very much at all. I don't miss it. It wasn't needed for any other purpose at that time or for any purpose in the foreseeable future. It's now been replaced several times over anyway.

Whist it would have been nice to have paid half of what I did pay unfortunately that level of fee wasn't on offer.

 

[Chris Ashdown]

Congratulations anyway for getting this far

If you do get awarded the Patent do you have enough money to defend it against a say Far Eastern company who makes copies the week after is awarded

 

[prophet01]

Chris

Your question isn't specific enough for me to provide a realistic response.
Depends on several factors e.g. who, where and how the company is trying to sell my infringed product.

 

[Chris Ashdown]

A UK patent gives you a twenty year uk monopoly on selling your product, but say a Far Eastern company makes slight variations on your patent and sells copies at half price in the UK, can you afford to take them to a civil court to fight them
It gives you rights under law but no help in the cost of using that law which may run into tens of thousands

 

[prophet01]

I'd take a view if and when that hypothetical scenario occurred.I'd already planned to get advice on methods of protection in such circumstances