Patents are by far and away the most complex, time consuming and expensive of the types of intellectual property dealt with at the IPO. First time applicants are often confused by the requirements of the Patents Act and amazed that it can take up to five years before an application is ultimately granted or, in the case of many applicants, the application is refused.
This blog is not to tell you how to apply for a patent, the IPO website does that; it’s more to highlight some of the misconceptions and common errors that applicants make, sadly all too often. Read on to learn more!
You’ve got an idea for a new product or process! Please resist the temptation to immediately post it all over social media, put it on your website or seek money via a crowdfunding exercise. If you put technical details of your idea in the public domain before filing the patent application then it’s likely to be refused. Play it safe – keep it secret before making the patent application. You can discuss it with others but you should use non-disclosure/confidentiality agreements.
Don’t submit an outline of the idea thinking you can add further information at a later date. Once an application has been made you cannot add to or amend the description or drawings. If you leave out crucial information you will have to start afresh, making a new application paying the application and search fees again. Please supply sufficient information to allow the application to be searched. Applications should be clearly worded, avoid ambiguity and use a concise turn of phrase
File the claims and pay the search fees on the date of filing. Your application will probably be searched six months after you pay the search fee. So if you delay paying the search fee and/or submitting claims then you may get the search result too late to enable you to make an informed decision regarding a possible international application. By the way, don’t underestimate the cost and complexity of international applications.
It’s an international legal requirement that all applications that have been searched are then published 18 months after the filing date. The IPO cannot delay, defer, postpone or prevent publication. However, if the applicant chooses to withdraw the application (an irreversible act) before publication then this stops it entering the public domain.
Read the letters that the IPO sends you and where required act on the contents straight away. If you don’t understand what the letter says then ring us to discuss. Many applications are refused due to inaction by the applicants.
Moved house? Please write in and tell the Office. If you don’t the correspondence will continue to go the old address. Applications have been refused due to such errors.
Consider using a patent attorney registered with CIPA. A badly drafted application is unlikely to get granted and will have no commercial value. Read Why you should use an IP attorney to find out more.
In parallel with the patent application, formulate a detailed business plan. Lots of applicants have no idea of possible markets for their products, unit costs, profit margins, collaborative ventures. We have all seen people on Dragons Den, they soon get chewed up and spat out. I’m firmly of the opinion that the business plan is the most important aspect of your idea. Try to be sure you have a market. Consider licensing the patent and if you do license it you may wish to familiarise yourself with the basics of contract law.
Listen to the latest IPO podcast where I talk more about patents for private applicants.
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Comment by Richard Gallafent posted on
The Regulator is IPReg, not CIPA. I trust this can be rapidly corrected!
Comment by Kirsty Edwards posted on
Thanks for highlighting Richard. Apologies for our error, I have now removed that line.
Comment by Steven Boxall posted on
You say 'idea'. To what extent can someone patent an idea without including technical details of how the idea would be implemented?
For example, if I before the 1960s said 'I've got this idea of sending a man to the moon', could I have patented it (without explaining how I would achieve this) and then charged NASA a fee for copying my idea?
I ask this becuase I have always thought that you can't patent an idea, but see reports, from time to time, that one of the big 'Technology' firms has patented an idea for doing........'. Can we now patent ideas or is this just further examples of poor reporting from the media?
Comment by Gareth Jones posted on
Thanks for the question, you raise a valid point. A patent application should contain sufficient technical information to allow a third party to carry out the idea. This is known as "enabling disclosure" i.e. does it enable the skilled person to understand how the product or process functions. So you are quite correct, broad brush ideas, or concepts can't be patented. The IPO website contains a lot of useful information to guide applicants before and during the making of an patent application. If you are contemplating making an application then I'd suggest having a thorough read of the various pages.