Did you see Dragon’s Den last week? Paul Hurnon had designed a space-saving bathroom, and he had spent 23 years refining his design. He had filed a patent application in the early days, and had even secured a granted UK patent, BUT, by the time he got into the Den, the patent had expired. The Dragons seemed to love the design, but he lost Peter Jones purely because the patent had expired and there was nothing to stop others from copying the idea.
Apparently, he had only shown the idea to a few potential backers or licensees during that time but, to my mind, now that he has demonstrated the design on national TV, if anyone with an existing route to market and the resources to develop the idea into a commercially-successful product decides it could be a good opportunity, there is literally nothing in place to stop them, and now no way of rectifying the situation. The truth is that timing your patent application just right can be essential to the success of your business.
What is the right time to file your patent application?
The first thing to say is that your initial UK patent application must be filed before there is any non confidential disclosure of your invention. But the best time to file your initial UK patent application is very dependent on specific circumstances, and there is no ‘one size fits all’. That said, more often than not, I advise clients to try and delay filing their initial patent application for as long as possible during the development stages, whilst they can realistically keep the invention confidential. This doesn’t stop them from talking to a handful of trusted people, such as product developers, potential investors, and even potential licensees, provided they can safely do so under a Non Disclosure Agreement. And, when it is no longer safe or practical to do this, only then file an initial UK patent application.
BUT…
Of course, this strategy doesn’t suit everyone, and the decision on timing must be taken on a case by case basis. However, the benefits of delaying for as long as practically possible cannot be denied.
Firstly, you would be basing the patent application on the form of the invention that is at least reasonably close to the form in which it will be manufactured and sold. That means that all relevant technical information can be included in the patent specification and that, in turn, could be important a little further down the line.
Secondly, and arguably more importantly, you start the so-called “priority” period running as close as practically possible to the point at which you are going to launch and (hopefully) monetize the invention.
The “priority” period is a 12-month window from the date of filing the initial UK patent application within which you must file any corresponding patent applications overseas and, by doing so, you get to “keep” the UK filing date for your overseas patent applications. This UK filing date is called the “priority date”, hence the term. If you file your initial UK patent application too soon, you may not only have to “top up” the patent specification to include any technical changes and additions that arise during the intervening 12 months, but you also have to take a difficult and expensive decision which, if you have to make it to soon in the commercialisation process, can result in opportunities being lost.
Some things to think about…
In an ideal world, you would file your UK patent application immediately before you launch or start pre-sales of your product, which allows you 12 months to a) make some money, and b) see where your main markets are going to be, so that at the 12-month point, you have sufficient funds and an idea of which countries you need to cover.
Of course, this strategy is not going to suit every business. For example, some innovators use crowd funding platforms to raise the money for their first manufacturing run and, given that a crowdfunding campaign would be considered public disclosure (obviously), a patent application would have to be filed before that goes live.
In other cases, perhaps where the inventor wants to speak to manufacturers overseas, and they don’t feel safe doing so under NDA, it might be worth considering filing a patent application before such discussions take place, just for added peace of mind. Or perhaps a potential investor is insisting on having the provisional protection of a patent application before investing. In fact, there are lots of different scenarios where filing a patent application a little sooner might be appropriate, and that is why the decision needs to be assessed on a case by case basis.
But, the one thing that is certain is that timing your patent application just right can contribute to the ultimate success of your business.
Need Help?
Do you need help to get the timing of your patent application just right? Contact us if you have any questions about this blog, or intellectual property more generally.
Strachan IP is a full service IP firm, with many years’ experience helping innovative SMEs to identify, capture, preserve and protect the valuable IP they create.
Feel free to book a free initial consultation by emailing vicki.strachan@strachanip.co.uk, or visit our website at https://strachanip.co.uk/contact/, or use our Calendly link: https://calendly.com/strachan-ip-a-fresh-view-of-intellectual-property/30min. Or you can give us a call on +44(0) 1432 652464 or +44 (0) 7714 797135
