Filing and Managing Patent Applications

Protecting intellectual property can seem complicated. To make the process less daunting, this article provides a refresher of some of the important concepts and procedures involved in protecting an invention, as well as suggesting some things to consider when managing a portfolio of patent applications.

Establishing priority

Filing a patent application puts a metaphorical stake in the ground on the date you file the application. The stake marks the beginning of a 12-month period, known as the “priority” period, during which you can file “priority-claiming” applications to protect the same invention in other countries around the world. The novelty and inventiveness of the first application and any priority-claiming applications will be judged against what was known on the filing date of the first application.

Disclosing the invention

Once the application has been filed, the applicant and the inventors can safely publish the details of the invention without jeopardising the patent application’s scope of protection. It is very important that your application is filed before the invention is publicly disclosed – otherwise the disclosure could be used to show that your own patent application is not new or is not inventive! Although some countries’ patent laws provide a “grace period” (which can enable an applicant to obtain patent protection even after the details of the invention have been disclosed by the applicant or inventor), these provisions are not available everywhere and should not be relied on.

Patent protection around the world – deciding where else to file

Suppose you have just filed or intend to file a first patent application for an invention at the UK Intellectual Property Office (UKIPO). Requesting accelerated search or combined search and examination of the application typically gives an indication within the priority year of whether the UKIPO considers your invention to be novel and inventive. You will then have more information to help you make a decision about how many other countries to file priority-claiming applications in. If the end of the priority year arrives and you are still unsure where you would like patent protection, consider filing an international (PCT) application. This effectively buys you another 18 months to make your decision.

Be strategic with your budget

If you do decide to file a PCT application, start thinking early about your future patenting strategy. In particular, try to consider what budget is likely to be available in years to come. Some PCT applicants reach the end of their extra 18 months of decision-making time and file applications in many countries, to keep options open. However, these applicants are sometimes forced to abandon some or all of the applications because their patenting budgets are depleted before any of the applications are granted.

By being more selective, you should be able to maintain your portfolio of patent applications through to grant. This will leave you in a stronger commercial position than initially pursuing many applications that you later abandon. Annual costs should diminish significantly when the patents grant, but it can be difficult to assess when this might happen. Your patent attorney may be able to help you with this.

Be versatile

If it seems that your patenting budget is going to shrink, ask your patent attorney what options you have for reducing outgoings. It might be that you could bring forward the grant of one or more of your patent applications (and therefore save money) by settling for a narrower scope of protection than the one you are currently pursuing, for example.

Swindell & Pearson has been helping businesses and individuals protect and defend their ideas, innovations and brands for over 130 years. With its head office in Derby, the firm also has offices in Stoke, Wolverhampton, Stafford, Sheffield and Burton. To find out how Swindell & Pearson can help you with any intellectual property requirements please get in touch via [email protected] or by telephone on 01332 367 051.