…and are you maximising the value you’re getting for your money?
I am often asked ‘why do patents cost so much…?’. Unfortunately, there is no one simple answer, but I thought I’d try and explain a little bit, and also provide some tips on how to help you make sure that you understand the value you’re getting for your money.
Patents have become increasingly valuable to innovative companies. In simple terms, if you have developed something technically new and innovative, a patent would enable you to stop others from being able to incorporate the same technical innovation in their own products. This technical innovation can be anything from a small technical improvement on an existing product, to a ground breaking or disruptive technology, and if it would be valuable to your business to be able to stop your competitors from doing the same, then it is worth considering patent protection.
Of course, if you discover someone infringing your patent rights, and you successfully take legal action to stop them, then the value of the patent is self evident. Similarly, if you licence a patent to a third party, then again the value can be quantified. However, it is well known in most tech industries that patents are expensive to infringe, and only the most unscrupulous (or misguided) companies will knowingly infringe another’s patent. This deterrent effect is one of the ‘hidden’ benefit of a patent, but it is almost impossible to quantify, so it value is often underestimated. Nevertheless, this, and of course any applicable Patent Box benefits all contribute to the overall value of having patent protection.
So why do patents cost so much…?
In order to reap those benefits, however, it is important to ensure that your patent covers everything you want/are entitled to stop others from doing (i.e. is as broad as possible), and that it would stand up to scrutiny if its validity were to be contested. This means that the patent specification should describe, not only what has been invented, but all possible combinations, permutations and alternatives. Because patents are expensive to infringe, there will always be those that seek to ‘get around’ your patent, and it is the job of your patent attorney to make sure that doesn’t happen to the greatest extent possible. This requires a lot of time, energy and experience, and that translates to cost. Most seasoned patentees know that the more time that is spent on drafting the patent specification, the better and more robust will be the end product.
However, I often hear complaints from businesses that say that they understood, and were expecting, the cost of preparing and filing their patent application, but started to get confused, and often alarmed, by a subsequent steady stream of unexpected, and seemingly random, invoices received from their patent attorney, without really understanding what they were for or the value that had been added to the process. This can become especially exasperating when you have a portfolio of several patents and patent applications in the UK and/or around the world.
Are you concerned about the escalating costs of securing patent protection for your innovation?
So how can you make sure you maximise the value you’re getting for your money? And how can you effectively budget for patent costs as your patent portfolio grows?
Here are our top tips to get the most out of the patent process:
- Always use a qualified Chartered Patent Attorney to prepare and file your initial UK patent application (check the Intellectual Property Regulatory Board register to make sure). The first patent application filed for an invention is critical and must describe the invention to its fullest extent possible. This takes time, effort and, above all, experience, so be prepared for a relatively high bill. However, a good patent attorney should be able to provide a reasonable estimate of costs from the outset, provided that you make sure you have provided them with all relevant information from the start. If you keep changing or adding things during the drafting process, it will inevitably take longer and cost more; so be clear and concise from the start, so as to minimise the number of iterations of the draft patent specification.
- Ask your patent attorney for a forecast of likely costs, what these costs are for, and when they will be billed out. Many patent attorneys will, on request, provide a rolling schedule pf your patents and applications, including next steps and estimated costs.
- If you email or telephone your patent attorney, ask them from the outset whether or not they will be charging for their time. If you are getting bills for getting answers to simple questions, it might be time to think about changing your patent attorney!
- Check to see if your patent attorney charges for sending you reminders for things like responding to an examination report. Some (like us) don’t, but if they do, consider putting the deadline and a reminder into your own diary, and then ask them to send only a single reminder near the deadline.
- When you receive a search report or examination report, ask them not to spend time reviewing it unless and until you instruct them and, when the time comes to prepare and file a response, ask for an estimate of costs. If it seems high, there may be things you can do to help reduce the cost (see 6. below).
- Always thoroughly review any search or examination report in which ‘prior art’ documents are cited, and get it very clear in your head what features of your invention set it apart from those described in your documents, and why those features make your invention better. The more clearly and concisely you can express that to your patent attorney, the less time it will take them to prepare and file a response, and the lower will be the cost.
- It is not unusual for various patents and patent applications to be become less valuable/relevant to your business as it grows and evolves, and new innovation emerges, so make sure you review your entire portfolio at least once a year and decide whether or not there is still value in maintaining or continuing with each patent right – does the value of being able to stop your competitors from doing what is claimed in the patent/application still match the cost of maintaining it? If you decide to drop any of your patent rights, make sure you let your patent attorney know, without delay, not to incur any further costs on that/those patent right(s).
- Mark your patented products (and/or their packaging) with the associated patent/application number. This outs any potential infringer on notice of your rights. It might deter them altogether, but if it doesn’t, they can’t claim they didn’t know.
- And finally…don’t disclose your inventions(s) to anyone, except confidence, unless and until an initial patent application has been filed.
Need Help?
If you need help with this, or any other, IP matter, please do book an initial consultation by emailing vicki.strachan@strachanip.co.uk or visit our website at https//:strachanip.co.uk/contact/
