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Start-ups — cost-effective patent filing strategies

Dr Terence Broderick

By Dr Terence Broderick

Senior Patent Attorney

Once you decide to file a patent, you must navigate the filing process. This guide outlines key considerations for a patent filing strategy, helping start-ups to gain knowledge, focus their efforts and save money.

1. How should I protect my invention?

    The obvious step for UK-based start-ups is to file a UK patent application at the UK Intellectual Property Office (UKIPO).

    The official fees for filing are relatively cheap and the quality of the search provided by the UKIPO is reasonable, giving a good base for decision making about overseas applications. While paying for a qualified patent attorney to draft the application is advisable and will increase your costs, the overall cost of a UK patent application is likely to be less than in other territories (as far as getting the process started is concerned).

    The deadline for filing overseas applications is 12 months from the initial UK filing date, if you’d like the overseas patent application to claim the filing date of the earlier UK application for the purposes of assessing novelty and inventive step. This is the concept of priority and means that overseas applications don’t need to be filed immediately when the UK application is filed. This saves significantly on costs where a start-up ultimately has a wider geographic scope of protection in mind but lacks the funds to immediately support a full international filing program.

    2. How much information do I need to give?

      When you disclose your invention to your patent attorney, you need to give enough information to enable them to identify the inventive concept and describe it in a way that will enable a third party to implement the invention. Your attorney can advise further on this, as certain fields in a patent application require more information than others. For this reason, it’s important to speak with patent attorneys that have experience in the relevant technology, as they are likely to be familiar with some of the problems that can arise during prosecution when certain pieces of information (for example, details of training data and methods for an AI-focused invention) are omitted.

      A patent application with the correct level of information is generally more cost effective than a patent application with scant amounts of information, as there is less chance of a drawn-out prosecution due to an unclear, insufficient disclosure.

      3. How do I decide where to file overseas?

        Filing in every country on the planet is very expensive and prohibitive for many start-ups. Most are advised to file in a select number of key overseas territories.

        The deadline for filing overseas application is 12 months from your initial patent application. During this period, it’s important to gather intelligence about where your competitors are active, as well as where your potential supply chain is based. You should at least ensure that you cover off these territories in your filing strategy, since patents are defensive rights and your competitors and suppliers are the most likely to be interested in infringing your patent applications. Your suppliers may also have access to confidential information that could be used to put your invention into effect.

        However, it isn’t always possible to identify these territories in such a relatively short space of time. If you can’t identify specific territories, the next best thing is to file an international patent application (often referred to as a PCT). This also needs to be filed before the 12-month deadline.

        A PCT typically costs roughly 5,000 GBP but will enable you to delay the specific choice of countries for a further 18 months. It will also mean that you’re issued with a further search report that can be persuasive in some of those territories (although no territory is obliged to grant a patent based on a search report at the PCT stage).

        4. How can I stay on top of the costs involved?

          The patent system is often seen as expensive but there are ways to stay on top of the costs and reduce the chance of unexpected invoices.

          Firstly, try to gain an understanding of the costs you’ll face. It’s generally impossible to predict costs with a high degree of precision, but your attorney should be able to help you budget.

          During your own research and intelligence gathering, certain territories will no doubt jump out as important and provide the geographic focus for your filing strategy but bear in mind that some are more expensive than others. Countries such as Japan and China, for instance, require the full translation of the patent specification and correspondence, which can easily elevate costs.

          Additionally, official fees in each territory can elevate costs considerably. These are paid to each patent office to examine your application and see if it meets the conditions to be granted.

          If more than a single European territory is of interest, consider filing a European patent application. This is a single application procedure that, if successful, grants a patent in 38 European states. It also provides the opportunity to pursue protection in seven other territories, including Hong Kong. Similar procedures exist in other parts of the world, including the Eurasian region and the ARIPO states in Africa.

          Finally, instruct your attorney in good time. The patent system is deadline intensive and attorneys take these deadlines very seriously. If you instruct your attorney in plenty of time to meet these deadlines, they are less likely to attach additional charges for urgency. This will also reduce the likelihood of liability for late filing fees, which can be levied by patent offices for applicants that miss deadlines.

          If you need an attorney to guide you through the patent process, get in touch with me directly at tsb@udl.co.uk.

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