IP Information & News

Cost effective patent prosecution tips for start-ups

Dr Terence Broderick

By Dr Terence Broderick

Senior Patent Attorney

Once a patent application has been filed, there is a period of time between filing and (hopefully) grant known as prosecution. This is where you’re required to convince the patent office that your invention is worthy of a patent. Here are some tips for start-ups to ensure that you have the best chance of prosecution success even with a limited budget.

1. Provide timely instructions

Following any patent application, you’ll receive correspondence from the patent office, almost certainly accompanied by a deadline for response. Often this will require the careful drafting of arguments in support of your invention, which takes time to prepare.

Informing and instructing your patent attorney at the last minute makes this very difficult, with less time to prepare effective arguments that will progress your application. This can extend the prosecution period and increase the likelihood of incurring fines for late filings.

Contacting your attorney as soon as possible after receiving correspondence keeps the cost of prosecution to a reasonable level and duration, avoiding the need for unexpected extensions.

2. Be realistic about your invention

It’s possible that, during prosecution, a patent office will find some proof that your invention has been invented before. This may mean that your invention needs to be redefined in some way.

If this is the case, don’t panic — it’s just part of the process. No amount of searching prior to filing a patent application will cover every document to ever be published and it’s always possible that something you never thought existed comes out of the woodwork when the patent office performs its own in-depth searches.

The important thing is to try to obtain a level of protection for your invention that covers your activities and provides an effective defence against your competitors.

3. Reuse arguments across a patent family

If you have a family of patent applications that cover the same concept in multiple territories, it’s entirely possible for the same objections and prior art documents to be cited in more than one territory.

If this happens, you could reduce the cost of your prosecution by considering the strategy and arguments applied elsewhere and using them as the basis for prosecution in another territory. While this still incurs costs, it will greatly reduce the amount required.

If you’re looking for advice on how to handle your patent applications, get tailored support from me at tsb@udl.co.uk.

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