This is the second in our series of informative pieces on Intellectual Property to help startups who may be confused about what IP means for their business and how to navigate the regulatory and legal frameworks to protect your precious idea.
Patent pending is a term that you will often hear on programmes like Dragons Den or the Apprentice. It occurs when inventors and entrepreneurs are talking to potential investors or collaborators. It’s also a term that we come across when talking to customers at business events around the UK, but what exactly does it mean?
My first memory of the term was from the cartoon The Wacky Races and Professor Pat Pending in his “Convert-A-Car”, but since joining the Intellectual Property Office it has become much more significant.
Patent pending is the term used to describe a patent application that has been filed, but where a patent has not yet been granted. Patent pending indicates that the inventor is pursuing protection. But the scope of protection, or whether a patent will even issue, is not guaranteed.
Marking an invention “patent pending” puts the public on notice that the underlying invention may be protected and that copying could infringe.
Do your research before filing
Many people will ask us how to file an application for their new idea, but it is not something that should be entered into lightly. The first thing that should be considered before filing is novelty. Is the invention new? Just because you haven’t seen one or it’s not in the Argos catalogue doesn’t mean that it hasn’t been done before.
A search through past patents will give you an indication whether it has been done before. Visiting one of the Pat Libs around the UK will be a good starting point to start your patent journey. Here they can show you how to perform a search using on-line patent tools.
If then you are happy that you still have something patentable, the next process is to do some market research. Who will buy it? What are the manufacturing costs? What are the alternatives? Do you have a business plan?
So, it’s new and there is a market for it. The next step is to try and protect it. This is where your “patent pending” or “patent applied for” comes into play. By filing a provisional patent application with us at the IPO, this establishes a priority date for your invention. It gives the applicant a fixed period of 12 months in which you can research the invention further and make those important decisions whether you wish to pursue the application to grant.
Because a provisional application can be filed easily, there is an assumption that it is something that can be prepared quickly, cheaply with little thought, or care for the content. This is far from the truth! If the application is going to act as the basis for priority for further UK or international filings, it will need to include all the relevant information to support the claims made in any subsequent application.
Thus an initial application will need to include a complete disclosure of the invention in sufficient detail to enable a skilled person in the relevant field of technology to make or put the invention into effect.
Seek legal help
Many assume that, because they are proficient in their area of technology, that drafting this document will be simple. In most instances this is not the case. We strongly advise you to seek legal advice before applying for a patent as it can be a complex and costly process. A patent specification is a legal document and requires specialist skills to draft properly. Your chances of obtaining a useful patent are much greater if you use an IP professional. A good starting point for advice is the Chartered Institute of Patent Attorneys or The Law Society.
Most people would not buy a home without professional help, and yet getting a patent is more difficult than that. If you get your patent application wrong at the start, it can be impossible to correct an error, resulting in a lost opportunity to protect your invention. This may mean that your application cannot be granted. It could also mean that your granted patent is less commercially valuable than it might have been.
Do not skimp on your initial patent application. It should be prepared with skill and drafted in a fashion that gives adequate protection for your invention. Don’t let the journey of your invention be hampered by admin. Educate yourself, get in touch and take your time to get it right.
Insight courtesy of Gary Townley of the IP Office.