Patents.Anyone with experience?

paddylonglegs

Hi,

Looking at patenting a product.I think I may need a worldwide patent,Has anyone had experience in dealing with this and the patent office?costs?precautions etc?

Quite difficult to find out what I want to know on the patents office website

Thanks

Salmon

Patents are very expensive and im not sure a worldwide patent exists. Its difficult to get a copperfastened patent as many are easy enough to invalidate if they are worth it to the big companies. I dont know your situation but it might be worth talking to one of the univerities or ITs they are fairly hungry at the mo for intellectual property. my advice is that if you have a good idea apply to the patent offices of UK, France and Germany as well as the US and try to commercialise the product, its the only way to make money imho!

ballooba

Talk to Cruickshank & Co.

Initial consultaton is free and I imagine they will be wuite frank with you.

information

paddylonglegs wrote:

Hi,

Looking at patenting a product.I think I may need a worldwide patent,Has anyone had experience in dealing with this and the patent office?costs?precautions etc?

Quite difficult to find out what I want to know on the patents office website

Thanks

It will cost about 5k to get patent pending status this will protect your IP for 2 years before you have to pay the full patent costs.

Enterprise Ireland shuld be your first contact, they can do basic inital patent searches for you and help you with the costs.

Pines

paddylonglegs wrote:

Hi,

Looking at patenting a product.I think I may need a worldwide patent,Has anyone had experience in dealing with this and the patent office?costs?precautions etc?

Quite difficult to find out what I want to know on the patents office website

Thanks

Some advice for free from a patent attorney (now there's something you don't hear often):

1) There's no such thing as a worldwide patent. There is an international application available, but this only defers the need to choose countries and to pay costs for obtaining a patent in each country (Europe can be covered as one country, at least until the patent is granted).

It's a common mistake to believe that you need a patent in every country. A patent gives you the right to prevent someone from importing the invention as well as making or selling it in the country where the patent is in force. So an invention which is patented in (say) EU and US can be protected against knock-off products made in the far east and imported into the lucrative EU/US markets. You protect the countries which are commercially important.

2) Costs for the first filing could be in the range €2-€6k, depending on who you use as your patent attorney and how complex the invention is. There's a list on www.aptma.ie. Normally you make a first filing in Ireland to get a filing date, then within 12 months file in the countries you actually want to cover. Costs for the foreign filings depend on the countries you're trying to cover. An international application at that stage might be in the region of €5-10k.

Over the following 3, 4 or 5 years you might end up spending many more tens of thousands, therefore it's only worth pursuing at that stage if the invention is actually making you money. In other words, the first filing is a priority, but then you really need to concentrate on how you are going to make money. Tens of thousands of euro is a pittance for a lucrative invention, but a fortune for an inventor who's not making any money selling his product.

3) Precautions: the biggest one is this - don't disclose your invention to the public before you file your patent application. Don't disclose it to anyone who has not agreed to keep it secret. It's ok to talk to your spouse, it's ok to talk to your patent attorney, and it's ok to talk to Enterprise Ireland etc. After that, think long and hard before describing your idea. Two reasons for this. First if the invention gets into the public domain, it's no longer seen as being "novel" in patent law, so you can ruin your chance of getting a patent. Second, if you tell your idea to someone before you have protected it with a patent filing, it can be very messy or even impossible trying to prove that they stole it from you (unlikely but it happens occasionally).

Just one or two comments on the advice given by ther posters:

- Information is correct except about the initial filing protecting you for 2 years: you only have 12 months to decide.

- Salmon is right about being serious about commercialising the product. See my comments at the end. However, while universities are currently making intellectual property a priority (as suggested by Salmon) I haven't yet seen any of them taking in an idea from outside, except as a joint venture with another 3rd level college or with established industry players.

In my experience, the biggest obstacle to private inventors who get into the patent system isn't the patent system itself. Instead it's the inability of most (but not all!) inventors to actually progress from an idea to a product which people are buying.

If the invention is patentable, you have a few choices - (a) make it yourself, (b) pay someone else to make it for you and sell it yourself, (c) convince a company to buy the patent rights from you, or (d) convince a company to licence it from you and pay you a royalty for each one they sell. Most people don't have the energy or commitment to make a success with (a) or (b), and most don't have the skills to succeed in identifying, approaching and convincing a company to buy or licence an invention. The ones who do have the right energy and skills can make a real success of their invention.

paddylonglegs

Thats great advice lads.I know a bit more now,cheers Pines.I would plan on setting up an appointment with my local Enterprise Board (which is the same as Enterprise Ireland yes?).I'm sure the most research I can find the better along with sketches etc.

Just on the Colleges using intellectual property.I am a graduate of a Design College in Industrial (Product) Design 3 years ago.They may still be interested if I am a past graduate?


Pines - Your options of a,b,c,d.Ideally c and d would be my top choice.I would need to know if Enterprise Ireland could put me in touch with the right company to take this on.If persay my product was sport or medical related,is there someone in Ireland who could put me in touch with the likes of adidas,nike,pfizer (hypathetically speaking)

paddylonglegs

Ok just read about that guy who designed a spider catcher.He spent 300k in 2 years protecting his product...emmm.Bubbles bursting all around me here.....

fintan

Also keep in mind, that even if you are granted a patent can you afford a legal battle to protect it from any challengers.

Talked to a guy the other day and he reckoned it would cost him 200k to challanage someones patent in the US

Pines

paddylonglegs wrote:

plan on setting up an appointment with my local Enterprise Board (which is the same as Enterprise Ireland yes?)

Yes and no. They should help you out all right, that's what they are there for. Enterprise Ireland has some expertise in actually doing patent searching (for free), which the local board might not have. But it's a good place to start and I have seen them help lots of inventors over the years.

paddylonglegs wrote:

Just on the Colleges using intellectual property.I am a graduate of a Design College in Industrial (Product) Design 3 years ago.They may still be interested if I am a past graduate?

My best guess? No, the college won't be too interested, though you may find one of your lecturers is. It's mainly the universities and ITs that have any experience in commercialising inventions, and even they don't do it for love. They look for ownership rights in whatever has been developed by the university staff they employ.

paddylonglegs wrote:

Pines - Your options of a,b,c,d.Ideally c and d would be my top choice.I would need to know if Enterprise Ireland could put me in touch with the right company to take this on.If persay my product was sport or medical related,is there someone in Ireland who could put me in touch with the likes of adidas,nike,pfizer (hypathetically speaking)

I don't know if they'll do that, but it won't hurt to ask them. Sorry I don't know the exact answer as to what assistance they'll provide.

paddylonglegs wrote:

Ok just read about that guy who designed a spider catcher.He spent 300k in 2 years protecting his product...emmm.Bubbles bursting all around me here.....

Bloody hell I wish my clients were spending 300k per invention! That's a lot of spiders needing catching. I don't know the details of that story, but it would be exceptional in my experience for an invention to really require more than say €20k over the first year or two in order to protect it. The higher costs come in year three normally, but even then, 300k could only have come about if the guy ended up in court suing someone, it couldn't be due just to patenting the invention in the major industrial countries IMO.

I agree with fintan's comment though that if you end up in court, either attacking a patent or suing someone for infringement, that you're going to need very deep pockets. Which is why it is so attractive to offload those problems onto a licensee with that sort of money (or at least one who is taken seriously). OTOH, the last fully litigated patent infringement action in Ireland was in the 80s - lots of patents are very useful in acting as deterrents or in providing licence royalties without ever having to go all the way through a court action.

antoinolachtnai

This is all really good advice, but remember one thing in addition:

- a patent doesn't give you a right to actually do anything. It only gives you a right to prevent other people from doing certain things.

I disagree with Pines and think you could easily run 300k in fees for an aggressive patenting strategy. The reason? Because it may not be enough to have one patent, you also need further patents to prevent your patent from being 'boxed in' by other inventions. You may also have too many claims to fit in one application. This makes the price multiply pretty quickly, because the extra patents would also have to be filed in all the jurisdictions.

I am not saying that this strategy would be wise, but it is certainly feasible.

All this said, I wouldn't be completely discouraged. Just be careful.

Antoin.