product launch

[congellous]

Hi
I have a product that I wish to sell direct to customer online internationally. I don't have the capital to go through all the international patent applications required. I have carried out diligent patent searches and a strong case for the products novelty and that the claims can not be read onto any other product out there. I can design and prototype and even construct the product with out massive financial outlay, so investment would only get me up to this stage anyway.
By launching the web site and seeking publicity it would be very prominent prior art, publicly launched and recorded.
I'm concerned that someone with the funds could then apply for the patent and stop me using my own design. I could not afford to defend the patent even if I had it so it's useless, I would also not be able to go after an infringement of my patent, however, if it started to become successful I would patent it worldwide and just want to make sure that I couldn't be beaten to it.

 

[David Warrilow]

Hi
I have a product that I wish to sell direct to customer online internationally. I don't have the capital to go through all the international patent applications required. I have carried out diligent patent searches and a strong case for the products novelty and that the claims can not be read onto any other product out there. I can design and prototype and even construct the product with out massive financial outlay, so investment would only get me up to this stage anyway.
By launching the web site and seeking publicity it would be very prominent prior art, publicly launched and recorded.
I'm concerned that someone with the funds could then apply for the patent and stop me using my own design. I could not afford to defend the patent even if I had it so it's useless, I would also not be able to go after an infringement of my patent, however, if it started to become successful I would patent it worldwide and just want to make sure that I couldn't be beaten to it.

Hi,

I'm a patent attorney at London IP.

You say that:

I don't have the capital to go through all the international patent applications required.

Well, you only need one application in the UK to start with. If you want protection overseas you can file a single applicaiton at 12 months (and 18 months later convert it into applications in the territories of interest). The idea is that within two and a half years from filing the UK application you are making enough money from it to justify paying for protection.

You also say:

I could not afford to defend the patent even if I had it so it's useless.

This is one of the worst reasons for not filing a patent application. The whole point of filing a patent application is protect a commercially valuable invention. If you're not going to make money out of it don't bother patenting it! Patenting something provides you with a monopoly that allows you to make a lot more money than you otherwise could.

You then say:

if it started to become successful I would patent it worldwide

You can't do that! To obtain valid patent protection most countries require you to file a patent application prior to any non-confidential disclosure of the invention. Thus, publishing details your invention on your website prevents both you and other people obtaining valid patent protection.

Filing a professionally written patent application is often less than the cost of prototyping (i.e. generally between £500 to £3000). You then have 12 months to work out whether or not it is worth spending any more money on patents.

Cheers

David

 

[congellous]

Hi,

I'm a patent attorney at London IP.

You say that:

I don't have the capital to go through all the international patent applications required.

Well, you only need one application in the UK to start with. If you want protection overseas you can file a single applicaiton at 12 months (and 18 months later convert it into applications in the territories of interest). The idea is that within two and a half years from filing the UK application you are making enough money from it to justify paying for protection.

You also say:

I could not afford to defend the patent even if I had it so it's useless.

This is one of the worst reasons for not filing a patent application. The whole point of filing a patent application is protect a commercially valuable invention. If you're not going to make money out of it don't bother patenting it! Patenting something provides you with a monopoly that allows you to make a lot more money than you otherwise could.

I'm not saying it's not commercially valuable, I'm saying that legal action would be useless as I don't have the money



You then say:

if it started to become successful I would patent it worldwide

You can't do that! To obtain valid patent protection most countries require you to file a patent application prior to any non-confidential disclosure of the invention. Thus, publishing details your invention on your website prevents both you and other people obtaining valid patent protection.

So therefore nobody can patent it following it's publication, I actually don't care if people develop the idea as it's holistic, I just don't want to be prevented from developing my own idea by someone applying for a patent.





Filing a professionally written patent application is often less than the cost of prototyping (i.e. generally between £500 to £3000). You then have 12 months to work out whether or not it is worth spending any more money on patents.

Thankyou for your advice I'm still undecided but you have put a good case

 

[makemoney]

Hi
I have a product that I wish to sell direct to customer online internationally. I don't have the capital to go through all the international patent applications required. I have carried out diligent patent searches and a strong case for the products novelty and that the claims can not be read onto any other product out there. I can design and prototype and even construct the product with out massive financial outlay, so investment would only get me up to this stage anyway.
By launching the web site and seeking publicity it would be very prominent prior art, publicly launched and recorded.
I'm concerned that someone with the funds could then apply for the patent and stop me using my own design. I could not afford to defend the patent even if I had it so it's useless, I would also not be able to go after an infringement of my patent, however, if it started to become successful I would patent it worldwide and just want to make sure that I couldn't be beaten to it.

If its that good then finding an investor should be easy, get a non-disclosure document so that you can talk to people about your product at least until you can get a patent. How much do you expect to pay for patents? You may be surprised if you DIY,

 

[congellous]

I don't think I need an investor. I can "go to market" with a web site and build to order for little to no outlay. I'm just worried that if it takes off I could be restricted by someone taking the patent route with the idea thus restricting me.

If the orders went into the hundreds, I would be able to raise finance on the back of this, but everyone is so paranoid about patents.

I want to spend my time on the design and publicity of the idea.

The main point is - if i publish my idea via a website selling the product does this prove my authorship and thus restrict anyone restricting me via patents ?

 

[David Warrilow]

The main point is - if i publish my idea via a website selling the product does this prove my authorship and thus restrict anyone restricting me via patents ?

The answer, essentially, is that although it doesn't prove authorship, yes, publishing it will stop you or anyone else later filing and having granted a valid patent for it.

However, you may end up regretting this tactic if you don't first apply to protect it and it becomes a big seller - there may be no way you can stop competition.

As to enforcing patents, most infringements are stopped with an exchange of letters, and in any event if it is a big seller you should have the money to enforce the patent. Enforcement costs start in the low thousands, and there is a cap of £50k for awards of costs in the Patents County Court.

David

 

[congellous]

Thanks again David, really helpful.

The other thing is that the "know how" elements of my product would not be published anywhere and would not be apparent in the product.

My market is not in the UK is also an issue, I would, however like to develop it here.

Would my UK patent application give a global notification of my idea ?

 

[Spearmint]

Thanks again David, really helpful.

The other thing is that the "know how" elements of my product would not be published anywhere and would not be apparent in the product.

My market is not in the UK is also an issue, I would, however like to develop it here.

Would my UK patent application give a global notification of my idea ?

Even if you are able to not disclose the 'know how' elements of your product, you need to ask yourself can it be reverse engineered by someone, and would that reveal the know how elements that you presently feel are safe.

There's nothing to stop you from manufacturing it here in the UK, but you may want to take advice from a Patent Attorney on where you file it, as it sounds as if you will need protection in the country or countries where you intend to sell it.

A UK only application wouldn't be effective enough, as there would be nothing to stop others from selling it in the countries where you intend to market it.

If you decide to apply for a patent in this country you have an option at the time of filing to nominate other countries where you may consider applying for patents as well, and I believe that this needs to be done 12 months after your initial filing.

I understand that if you decide at that time not to apply to the other nominated countries then you lose the opportunity to do so, so its quite a tough and expensive decision.
This is why I thought that you should reconsider where you apply. If your product is for instance only likely to be sold in Australia, I'd be inclined to apply there, if the rules permit you to do so. At the end of the day, it all depends on which country or countries you are targeting.

I'm sure that David may comment further on your final question, but once you file a patent application it will not be published for a while (its either 12 or 18 months I think) and once it is published it will be available in the public domain.

Best of luck with it

Peter

 

[David Warrilow]

Thanks again David, really helpful.

The other thing is that the "know how" elements of my product would not be published anywhere and would not be apparent in the product.

My market is not in the UK is also an issue, I would, however like to develop it here.

Would my UK patent application give a global notification of my idea ?

Is the product the invention or is the way of making it the invention? Your above comment regarding know-how raises a lot of issues that I can't really advise upon in the abstract.

Is the know-how the invention, or is the product the invention? Is the product the result of a new inventive process? If so and nobody could ever work out the process there is an argument for not filing an application (which would need to disclose the new process) but instead keep it secret However, if you were confident a patent would be granted it may be worth filing as it could make your business more scalable.

I'm afraid that without specific information I cannot provide guidance. If you would like to talk on the phone (confidentially) please pm me.

If not the UK where is your market?

I'm not sure what you mean by global 'notification'; a UK application would notionally protect you worldwode for 12 months provided you filed any applications for overseas protection within 12 months and claim priority from the UK application. The patent application(s) will be published around 18 months from the earliest filing.

David

 

[congellous]

Even if you are able to not disclose the 'know how' elements of your product, you need to ask yourself can it be reverse engineered by someone, and would that reveal the know how elements that you presently feel are safe.

It could but you would have to deconstruct it and the components. I would then be up and running ???



There's nothing to stop you from manufacturing it here in the UK, but you may want to take advice from a Patent Attorney on where you file it, as it sounds as if you will need protection in the country or countries where you intend to sell it.

I've got 12 countries at the moment, sounds expensive ! Starting with U.S and China,

A UK only application wouldn't be effective enough, as there would be nothing to stop others from selling it in the countries where you intend to market it.
If you decide to apply for a patent in this country you have an option at the time of filing to nominate other countries where you may consider applying for patents as well, and I believe that this needs to be done 12 months after your initial filing.

How much is it to nominate / country ?

I understand that if you decide at that time not to apply to the other nominated countries then you lose the opportunity to do so, so its quite a tough and expensive decision.
This is why I thought that you should reconsider where you apply. If your product is for instance only likely to be sold in Australia, I'd be inclined to apply there, if the rules permit you to do so. At the end of the day, it all depends on which country or countries you are targeting.

This were I'm coming full circle to spend the time and money on the product, it's design, the marketing and publicity.


I'm sure that David may comment further on your final question, but once you file a patent application it will not be published for a while (its either 12 or 18 months I think) and once it is published it will be available in the public domain.

Oh O.K I thought it went straight up there, so you have 12 months to develop and get going.

Thanks for your help this has answered my questions in two days what I had been reading through for two weeks.

 

[congellous]

Is the product the invention or is the way of making it the invention? Your above comment regarding know-how raises a lot of issues that I can't really advise upon in the abstract.

The product is the invention but it's construction is inventive and may after testing prove to become more important.
Is the know-how the invention, or is the product the invention? Is the product the result of a new inventive process? If so and nobody could ever work out the process there is an argument for not filing an application (which would need to disclose the new process) but instead keep it secret However, if you were confident a patent would be granted it may be worth filing as it could make your business more scalable.

I think someone could work it out but by then it would be on the market, I think it would have to be doing pretty well before someone decided to reverse engineer it. Wouldn't they then be infringing my design copyright ?

I'm afraid that without specific information I cannot provide guidance. If you would like to talk on the phone (confidentially) please pm me.

I really need this thread as part of my research and it's pace and need for thought is very helpful.


If not the UK where is your market?

12 countries worldwide minimum, biggest market North America, Asia, South America


I'm not sure what you mean by global 'notification'; a UK application would notionally protect you worldwode for 12 months provided you filed any applications for overseas protection within 12 months and claim priority from the UK application. The patent application(s) will be published around 18 months from the earliest filing.

That's encouraging, I don't know if I can afford 12 countries though.
So if I applied for U.S patent, then looked for funding whilst developing the prototypes and testing then product launch.

I'm still confused to how much further to testing the market I'd be then now, and without investment loans to pay back ?
I'd be looking bankruptcy in the face rather than being in competition with some idea rip off merchant, and I still don't think they could have the insight into the project as I have.

Hmmm

 

[Spearmint]

Reverse Engineering - If it was of significant financial benefit, I don't think health & safety would be much of a deterrent to some

Welcome to the lonely and complex world of inventing and IP - you think that you've invented the best thing since sliced bread, and once you start to investigate IP further, it slowly saps away your initial enthusiasm! What with the cost of patenting, searching, fees, infringement, etc, etc, etc.

The other unfortunate aspect of it, is that you need advice on how to tackle the problem, but at the same time you've got to keep your invention secret, so you have to seek advice from books, the internet, forums like this one, unless you pay for the advice from Patent Attorneys or the like, so it can be pretty frustrating to say the least. Its worth bearing in mind though, that most Patent Attorneys offer a free initial consultation which is usually about half an hour.

If you haven't done so already you ought to look at the IPO website, as there is a fair bit of information on there in terms of fees, searching etc, etc but I dont think it includes the professional costs (Patent Attorney) fees, just the filing fees. You're unlikely to get a fixed quotation for the fees from a Patent Attorney as each application is different, and I'm told that it depends on several factors, but you may be given an approximate figure.

Firstly, you will have to pay for all of the required searches to be done to see if you are able to patent it. You will have probably done some searching so far, but you will probably be advised to have a professional one done as well.

Then, you would have the cost of a Patent Attorney drafting the patent application (hopefully this won't need to be done again for applications to other countries, but be prepared to pay for translation costs)

The fees for each country (See the IPO website)
Related correspondence associated with the application - this is the variable one, so this cost would be unknown.

That initial 12 month period after you first file your application is often an advantage for inventors/patentees as it enables you to develop and market your product ahead of the competition. However, I'm really referring to applications made in the UK, but there could be different rules in other countries, so you may have to check that.

I purchased a book about patents, so pm me if you want the name of it.

Peter

 

[congellous]

Hi thanks for that - at the moment I'm thinking of......

Applying for a U.S provisional patent with the option for the additional countries, up to twelve, following my design prototyping in case there are any changes.
Will this be enough for investors if I need funding in the future ?

 

[David Warrilow]

Hi thanks for that - at the moment I'm thinking of......

Applying for a U.S provisional patent with the option for the additional countries, up to twelve, following my design prototyping in case there are any changes.
Will this be enough for investors if I need funding in the future ?

Why do you want to file a US provisional application to start with? That doesn't provide any advantage at all.

File a UK application, which has no mandatory official fees payable on filing. Or you could pay £150 and have the official search done. You'd then get the search report back within around 4 months of filing.

Also, for some inventions you need security clearance to first file outside of the UK.

David

 

[congellous]

Why do you want to file a US provisional application to start with? That doesn't provide any advantage at all.

I have no market in the UK and it's the main market was my thinking, oh and it's cheap.

File a UK application, which has no mandatory official fees payable on filing. Or you could pay £150 and have the official search done. You'd then get the search report back within around 4 months of filing.

Huh, No fees for filing, until when ?

Also, for some inventions you need security clearance to first file outside of the UK.

From who the government ?

 

[David Warrilow]

The fact you have no market in the UK is irrelevant.

You could simply file the UK application and never pay the search and filing fee (due within 12 months of filing). The UK application will lapse at 12 months, but it will have served its purpose.

Filing the UK application generates a 'priority date' and presuming you file a PCT patent application (advisable if you want to cover 12 countries) within 12 months of the UK application then the PCT application can be backdated to the date of filing the UK application (by 'claiming priority').

A further 18 months later the PCT application is converted into separate national/regional applications.

Regarding clearance to first file abroad you have to apply to UKIPO. Whether or not you need it depends on subject matter.

If you pm me your email address I can send you some leaflets on patent procedure.

David

 

[congellous]

The fact you have no market in the UK is irrelevant.

You could simply file the UK application and never pay the search and filing fee (due within 12 months of filing). The UK application will lapse at 12 months, but it will have served its purpose.

Will this be enough for "patent pending" status, and if so will that be enough for an investor ?

Filing the UK application generates a 'priority date' and presuming you file a PCT patent application (advisable if you want to cover 12 countries) within 12 months of the UK application then the PCT application can be backdated to the date of filing the UK application (by 'claiming priority').

A further 18 months later the PCT application is converted into separate national/regional applications.


So it's let's say £1000 / country, I'm looking at £12,000 minimum and then I let the UK one lapse. Can someone then patent it in the UK ?

You can't import, legally, any product into a country where the patent is held.
The problem is it's so useful that I personally would by a rip off product anyway and I'm law abiding. What about the minor tweaking of a product as well.
I'm trying to price it where you couldn't build it yourself for cheaper


Regarding clearance to first file abroad you have to apply to UKIPO. Whether or not you need it depends on subject matter.

My head hurts......

 

[palmery]

Verdana,geneva,lucida,'lucida grande',arial,helvetica,sans-serif There are many plugins that can accomplish this. Alternatively you can set forum access permissions like this and accept payments and upgrade members manually. Its really very simple.

bpwfoundation.org

 

[palmery]

[FONT=verdana,geneva,lucida,'lucida grande',arial,helvetica,sans-serif]It would be better i guess if you keep some sections of the forum free and convert some sections into premium access like this place. [/FONT]
[FONT=verdana,geneva,lucida,'lucida grande',arial,helvetica,sans-serif]There are many plugins that can accomplish this. Alternatively you can set forum access permissions like this and accept payments and upgrade members manually. Its really very simple.


[/FONT]

 

[congellous]

Why do you want to file a US provisional application to start with? That doesn't provide any advantage at all.

File a UK application, which has no mandatory official fees payable on filing. Or you could pay £150 and have the official search done. You'd then get the search report back within around 4 months of filing.

Also, for some inventions you need security clearance to first file outside of the UK.

What is the official search, is that a international patent search ?

 

[David Warrilow]

What is the official search, is that a international patent search ?

Yes it is.

Any patent search has to be 'international' or 'worldwide' to be meaningful. Patentability (i.e. novelty and inventive step) has to be assessed on a global basis.

David

 

[congellous]

So if I apply for the patent with the international search then I can use the status as Patent pending ?
Does then mean I can publish it on the website and apply for funding with it protected

 

[congellous]

I also have three clear methods of constructing my invention, do I use descriptions that would apply to all of them -

If I was describing a slate roof I could say

Welsh slates at 75mm headlap on battens on specific underlay on roof rafters

or

hard wearing outer layer on secondary structure on main load bearing rafters

 

[GraemeL]

David Warrilow

deserves at least a medal for this help.

G

 

[David Warrilow]

David Warrilow

deserves at least a medal for this help.

G

Thanks Graeme...is there such a thing as a UKBF medal?

Cong.... you have so many questions it would be better to talk matters over by phone...pm me and I'll send you my direct line.

Cheers

David

 

[congellous]

I have trawled through all the IPO advice and Davids fact sheets and it's all making a lot more sense, however (lol), once the patent application is in, can I then show the idea to people and publish it on the web ?