If you are developing products you may want to protect with patents, it is important to time your patent strategy right. Whether you're an entrepreneur developing your first new product, or heading up an R&D team for an established tech company, understanding why timing is important for patents is key to a robust patent strategy. Getting it wrong can be anything from costly and inconvenient to disastrous.
Keeping your invention confidential
Rule number one of any patent strategy is that you must file a patent application before there is any non-confidential disclosure of your invention. You can use NDAs to speak to selected people, such as product developers, designers, manufacturers or investors.
But otherwise, it is important to keep your new product confidential before you file a patent application, because any non-confidential disclosure before your filing date will invalidate your patent application in most countries around the world. So, if you need to disclose your new product in order to get it further along the development process. for example, you plan to launch a crowdfunding campaign or advertise for pre-sales in order to raise funds. Then you must get a patent application filed beforehand. If you're unsure about what you can and can't do before filing a patent application, contact us for some advice.
Patentability Searching
It is often wise to do some patentability searching before heading down the patent route. Just to give us some confidence that your application has a good chance of being successful. These take a little time, so that needs to be factored into your plan. But when is the best time to have a patentability search performed? If you do it too early (i.e. at the concept stage), the search may not cover the main aspects of the final product that you ultimately want to protect (because they haven't been developed yet).
But it can be useful to have the search done reasonably early in the development process to:
a) make sure you're not re-inventing the wheel, so to speak, and
b) give some insight as to how others have tried to solve the same problems.
As a rule of thumb, once the first working prototype has been approved (so the rest of the development process is likely to just involve relatively minor tweaks and changes) is a good time to consider having a patentability search done, but there is no ham in discussing it with us before then, to talk it through.
Filing your patent application too soon
It is tempting to consider filing your first patent application almost as soon as you've had an idea for a new product, before any significant development work has taken place. But that is rarely a good idea.
When you file your first patent application (e.g. in the UK), the filing date of that application is known as the 'priority date', and it starts a 12-month 'clock' running: you only have 12 months from that date to:
a) 'top up' the patent specification with any changes or additions arising from the development process and re-file the application, and
b) file any corresponding overseas applications,
if you want to keep your priority date.
BUT 12 months is not a long time in the product development arena, and you run the risk of getting to the 12-month point and not being ready to make the necessary decisions. Of course, you can consider withdrawing the original application and re-file it to start the 12-month clock running again. But then you lose your priority date so if there has been any non-confidential disclosure of your invention in the meantime, this would not be a viable option. The big risk then is that your patent application does not properly cover your final product.
Getting the timing right
As mentioned above, any non-confidential disclosure of your innovation will invalidate a patent application filed afterwards. But as a rule of thumb, I often advise clients to get as far down the development process as they can without needing to disclose their invention (except under NDA - see above), before filing their first patent application. The benefits of this strategy, when it is appropriate, are:
a) the patent specification will properly describe and cover all of the technical features of the final product from the outset, and
b) it gives you another 12 months from then to get the product finalized and (hopefully) launched before you have to make the (relatively costly) decisions about overseas applications.
But, again, there is no harm in speaking to us early in the process, so that we can decide together what timing would be right for your business.
Need Help?
Whether you're a first-time product developer or the founder of a successful tech company that relies on innovation to stay ahead of your competitors, we can help to optimize your patent strategy to make sure you're taking the right steps at the right time for your business.
Book your free consultation by going to our website; https://strachanip.co.uk/contact
or email vicki.strachan@strachanip.co.uk or give us a call on 07714797135
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