For the Want of a Nail – Patent Filing False Economies?
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Regular readers will know I am passionate about taking a long view on business innovation and IP. When is saving money now on your patenting strategy a false economy?
Let me ask you three questions
- Should we carry out a pre-filing novelty search?
- Should we file a new UK patent application without claims?
- Should we file a new UK patent application without an official UK search request?
Let’s consider. Patents are granted for technologies that are novel and inventive.
To file a patent application is to take a risk. That risk can be mitigated with information. To file foreign patent applications at the end of the first priority year is to take a bigger risk. That risk can also be mitigated with information. To not file patents is a bigger risk perhaps.
At the very least, early information can inform these decisions, shaping them, guiding them, perhaps even changing them. Less information is unhelpful.
To answer question 1: Should we carry out a pre-filing novelty search?
Inventors know their fields well. Start-up and university inventors especially so. A pre-filing novelty search may not always be essential but it is often advisable because it is a check to see whether your invention is novel, at least on the face of it.
To answer question 2: Should we file a new UK patent application without claims?
Knowing at the start what you think your invention is, even if you have to tweak it later on the journey through to grant, is a good idea. If you know what your invention is, what you are seeking protection for in the claims, then you can assess their commercial value.
It is a good idea to have the exact claim wording and multiple fall-back positions that you may wish to protect in the earliest patent application you file – the first one. This is because there is then no doubt that the words you want to use are there from the start and there is far less risk of added matter objections later on.
As patent attorneys, we know that claim-like wording has to be in that earliest filed patent application even if it is not called ‘claims’ as such. Much of the thinking work is already done. So why delay including claims? You have the words, so include claims.
To answer question 3: Should we file a new UK patent application without an official UK search request?
The official fee for a UK search request is £150. We charge £360 plus VAT when we file one at the same time as a first patent application and later report the results of the search, so a total of £510.
For an additional £510, you get a world-wide novelty search by a world class patent office in around 6 to 8 months after your first filing. This is very useful early information to have before the end of the first 12 months when the earliest of the expensive strategic decisions have to be made.
When might we not file a search request along with an initial application – almost never. That early insight and information is just too valuable.
As the old saying goes, ‘for the want of a nail, a shoe was lost’.
- Posted under:
- #IPStrategy
- #patentattorney
- IP
