Protecting intellectual property

弁護士

Dear Mr. Mitchell,

A priori and subject - preferably - your prototype has not yet been disclosed to the public, you can get a whole arsenal of protections in the UK - the IP counsels of your countries can confirm - and beyond, subject of course to fulfill the legal requirements.

First your prototype can consist in a process or device capable of industrial application, new in absolute and manifesting an inventive step. Where appropriate, it would be a technical creation producing a technical effect, with or without the help of a particular software. A patent can thus be considered throughout the piece to protect its technical specifications, its operation and eventually its result. You can start by filing a patent application with the Intellectual Property Office ("IPO", Newport) and an international extension designating for example, the rest of Europe (European Patent), and North America, via a PCT patent application required under English priority in the year of the original filing, according to the results of the research report of the IPO.

The software in turn, may be protected by copyright in most European countries subject, in particular, its originality and the patent way in other countries (the USA for example).

The shape of the machine, its aesthetic appearance, its design, are "automatically" protected by the copyright law in the UK and many other countries, subject, in particular, its originality. However, some precautions can be taken in your country and the other Anglo-Saxon countries through a copyright filing, while protection by the copyright law will be admitted and recognized in other countries like France without administrative formalities.

The design may also be protected by a design patent or possibly a three-dimensional trademark via a filing, subject to gather the required legal conditions. English filing and / or community filing and / or international filing will be required.

If you want to limit your coverage in the UK, take direct contact with a British IP counsel (patent attorney, trademark attonrney, IP lawyer), those of Nexus IP are available.

If you plan directly a much broader protection - European patent, Community trademark and design patent ... - my team and I can assist you.

In practice, it would take us to be able to study and understand the content and form of your prototype to see how it looks and functions and it is actually protectable in whole or in part by a patent, a design patent, a copyright ... and for what cost ...

My team often works on medical devices and we are used to conduct large searches in prior art and patentability of previous studies on the subject.

If you need and without it commit you to anything, you can speak directly technical and aesthetic elements related to your prototype so that we can have a much clearer idea of what is possible consider and what financial conditions.

Hoping to have answered, at least in part, to your questions and expectations.

Sincerely yours,
Simon

エンジニア

Hi Joseph, you could start by filing a provisional patent application to protect your idea and lock down on a priority date. That would give you the freedom to talk about your idea and develop it further without fearing that someone would steal your ideas! A provisional patent application is also not heavy on your pocket, it is the best option for individual inventors start-up companies.

弁理士

You should file a patent application as soon as possible if in fact you want to develop, manufacture, and sell your equipment - or even license it. The best way to start is to probably file a patent application in the UK and then within one year of filing your UK application, you will need to file a PCT application which effectively opens the door to foreign countries. For many of the specifics involved, costs and fess, you should consult a patent professional.

With respect to costs, a provisional patent application is not always less costly than a non-provisional application. Only if you have a really decent disclosure, where you effectively clearly disclose everything of importance and how everything works, will the provisional application be less costly because then to obtain your early filing date, you can pretty much just file your disclosure, adding some claims which is preferable. However, if your disclosure is not that good or complete, you will need to actually draft a provisional application which should be every bit as complete, accurate, and thorough as a non-provisional application because the provisional application will have to serve as priority for the non-provisional application and if important disclosure material is not present in the provisional application, your non-provisional application will not be accorded the filing date of your provisional application with respect to those non-disclosed features or materials because they simply did not exist in the provisional application and therefore they cannot support such features or materials which later appear only in the non-provisional application. In such a case, your cost for a provisional application will not be much less than for a non-provisional application, other than the government filing fee, at least here in the US.

弁理士

Hello Joseph,

one thing is sure. Not filing a patent now to protect your idea or, worse, filing one badly written, will cost you a great deal more in the long run than the costs of filing a patent now.

The most important thing you have to keep in mind at the moment is: avoid disclosure. Do not disclose your idea in any way (written, orally, by advertising/selling the product, etc.) as this may take away the possibility to file the patent in the future. If you absolutely have to disclose your idea to a third party (i.e. investors), make sure you do so under a non disclosure agreement.

Once you have a more or less finalized idea of how your device will look like, I would suggest to file a UK or European patent. If your reference market is the EU, an European patent is the easiest choice. It does cost marginally more than a UK patent, but if offers a much wider territorial coverage.

The costs of drafting and filing a patent, up to the receipt of the Search Report from the patent office for a european patent are generally between 5k and 10k, depending on the complexity of the invention and how expensive your IP attorney is. Generally speaking, as in any job, an attorney located in an expensive city (i.e. London) will cost more than one in a comparatively cheaper location. I would suggest choosing a firm with several attorneys, who has been in business for a while, and who can ensure your work will be done by an attorney, and not by the last hired trainee.

Once you receive the search report from the patent office, you will have a realistic feedback on how likely it will be for you to get a patent, and with which scope of protection.

Should you have any question, do not hesitate to get in touch.