Patent plan

[martinto]

Hi,

I'd like to ask for advice about my plan to proceed with a patent application. Is this plan fine? what are the risks?


I'm developing a system that uses augmented reality for smartphones in novel ways. I was thinking to file a patent once I finish a prototype, but as augmented reality is such a hot topic at the moment and new things are appearing every day, I decided to file the patent first. The problem is that I can't afford a patent attorney at the moment.

So my plan is to write the specification of the patent myself (I've read the "patent it yourself" book and other online resource for software patents and reviewed over 30 published patents on prior art, so I know how they look and I think I can write it myself). I'll make sure there is sufficient disclosure in the specification. Then I'll file it online in the IPO, just the specification and drawing, no claims or abstract. That gives me 12 months of patent pending status for free.

Then I can advance my prototype a bit more, and then look for investors on the product. I think that having an early prototype and a patent pending status will be much more attractive to investors. Then once I have some money for the project, and no later than 12 months after my initial filing date, I'll get a patent attorney to write a new patent application, claiming priority of my original filing date, and including any potential new developments (I know that new information that is not in my original specification would have the later filing date), the claims and abstract. At that point I can also file internationally through the PTC.

Any comments on this plan?

 

[Paul_Rosser]

The plan looks fine.

Are you going to register the patent personally or via a limited company ?

If it's the latter once it's approved you can benefit from the new Patent Box regulation coming in this April.

 

[martinto]

I'm only registered as sole trader, so I'll file it personally. Once I get investment and find a business partner I was planing to register a company. Would it be possible to change the registration of the patent to a company afterwards?

 

[Paul_Rosser]

Yes you can, however I imagine you will find it easier to get investment into a limited company which holds the patent, as the investor will get X shares for their capital.

 

[David Warrilow]

Hi,

I'd like to ask for advice about my plan to proceed with a patent application. Is this plan fine? what are the risks?


I'm developing a system that uses augmented reality for smartphones in novel ways. I was thinking to file a patent once I finish a prototype, but as augmented reality is such a hot topic at the moment and new things are appearing every day, I decided to file the patent first. The problem is that I can't afford a patent attorney at the moment.

So my plan is to write the specification of the patent myself (I've read the "patent it yourself" book and other online resource for software patents and reviewed over 30 published patents on prior art, so I know how they look and I think I can write it myself). I'll make sure there is sufficient disclosure in the specification. Then I'll file it online in the IPO, just the specification and drawing, no claims or abstract. That gives me 12 months of patent pending status for free.

Then I can advance my prototype a bit more, and then look for investors on the product. I think that having an early prototype and a patent pending status will be much more attractive to investors. Then once I have some money for the project, and no later than 12 months after my initial filing date, I'll get a patent attorney to write a new patent application, claiming priority of my original filing date, and including any potential new developments (I know that new information that is not in my original specification would have the later filing date), the claims and abstract. At that point I can also file internationally through the PTC.

Any comments on this plan?

From the point of view of a patent attorney, I would suggest at least one modification to your plan.

File it with claims and request the official search.

If you aren't paying for a patent attorney to write the application then presumably you are not paying for any sort of professional patent search.

Once the PCT application is filed you won't be able to add anything to it.

You would increase your chances of securing patent protection if the PCT application is written in light of some search results (in this case the UKIPO search). Having knowledge of the most similar inventions can allow you to word any application so as to avoid unintentionally covering the prior art.

Indeed, if the official search finds some devastating prior art then you might choose not to spend money (£2500 in official fees) on a PCT application.

If the official search is requested on filing then you should get the search results in around 4 months (presuming the UKIPO doesn't consider your claimed invention to constitute excluded subject matter, in which case they might refuse to perform a search).

You might find some other useful tips in our patent guide here:

http://www.londonip.com/Patent Guide.pdf

One such tip is the possibility of withdrawing your original application (instead of filing a PCT application) and re-filing it so as to set the 12 month priority period running again. Of course, there are prior art risks with doing so , but it can be an attractive option for reasons of, for example, further developments, funds and deadlines.

Hope this helps.

David