Tara: Please could you tell me a little bit about where you are based, your background experience and what you do now?
Matthew: I am based near to Victoria Square in Birmingham, UK. My background is a bachelors degree in mechanical engineering, followed by a masters degree in IP law. I trained to become a European patent, design, and trademark attorney at a top 10 firm of patent and trademark attorneys, and subsequently started my own practice.
Tara: Are there any cheap and easy ways that an inventor can protect their inventions prior to filing a patent?
Matthew: You can use a confidentiality agreement (often referred to as a non disclosure agreement (or NDA), to oblige a person to keep details of the invention confidential. But this can be problematic if the NDA is breached. The only way of protecting an invention in the UK is to file a patent application (and this is only worth the paper it is written on if the claims that define the desired monopoly are well drafted).
Tara: What types of IP protection are available for an inventor and how can they best be used?
Matthew: Broadly speaking, a patent is intended to prevent a competitor from reproducing a functional, technical, feature of a product or process. A registered design is intended to prevent a competitor from reproducing the visual appearance of a product. Hence, a registered design is particularly suitable for a consumer product which is often designed to appeal to the eye of a customer. It is possible for different aspects of a single product to have both types of protection. In some countries other forms of IP are available for inventions, such as utility models or the like.
Tara: What is patentable? please could you give an example?
Matthew: In order to be patentable in the UK and Europe, broadly speaking, an invention should demonstrate a solution to a technical problem, which is both new in comparison with the closest known public material, and not obvious in light of the closest known public material. A simple example is a cleaning glove, which overcomes the problem of wearing a glove on one hand and having to use the other hand to squeeze a washing up liquid container to disperse washing up liquid on the object to be cleaned, which does so by
using two gloves, one inside the other, to define an inner reservoir for washing up liquid, which can be dispensed through pores in the outer glove simply by squeezing the glove.
Tara: What is the difference between a preliminary patent application and full patent application and how should each be used?
Matthew: In the UK, a preliminary application does not require claims. A full application requires claims. But for the preliminary application to be worthwhile, to provide the broadest protection possible, it should contain statements that foreshadow the eventual claims. Because of this, I tend to advise simply filing a full application including claims. I generally advise requesting a search at the time of filing, particularly if the client is an individual inventor who is not very familiar with the history of the technical field of their invention. In this way, the client gets a quick indication of the patentability of the invention, before the deadline for filing applications overseas for example, and before too much time and money has been invested in the project.
Tara: Ideally what information and research should an inventor have done before they come to you to file a patent?
Matthew: A search of prior published patent applications on the excellent Espacenet website (http://worldwide.espacenet.com/). And, a Google search is always
worthwhile. Use generic keywords because someone else may have invented the same or a similar thing but described it using different terminology.
Tara: What sort of timeframe from initial application does it normally take for a patent to be granted or declined?
Matthew: In the UK, the normal time frame to reach grant is about 3 years. It is possible to request accelerated processing of the application but a reason
is needed, for example an infringer is already active on the market. In this way, grant can be reached in about 1 year.
Tara: What sort or costs are involved with filing a patent in the UK?
Matthew: £1250 to £1500 to draft a patent specification, and file it, along with a request for a search. More if the material is technically complicated, particularly lengthy, or there is more than one invention to be claimed.
Tara: What tips would you give to a novice inventor?
Matthew: Understand IP, particularly if your only realistic route to commercialisation is through licensing or assigning the idea (as opposed to making it). If an industry player can reap the fruit of your idea without sharing them with you, chances are they will.
Tara: Where can people find out more about you and your company?
Matthew: Visit my website, www.allenip.com
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