In this interview European Patent Attorney Matthew Allen, from Allen IP offers his advice to novice inventors on how to protect their intellectual property.
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?
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In this podcast interview Eric Hanscom from Inter Continental IP, who not only is a US Patent Attorney, but is also an inventor himself offers his advice on how inventors should protect their intellectual property. This includes information about the importance of doing a patent search, the difference a design patent and a utility patent and how an independent inventor can use a provisional patent to keep their costs down while finding out if there is a market for their invention.
I also asked Eric about the recent changes to the US patent system and what it means to the independent inventor.
One thing I have learned in doing so much research about inventing and invention is that it is always worth doing a prior art/patent search even if you don’t intend filing a patent. Come up with a list of keywords for how someone might search for the invention idea and make sure you take into account that even different English speaking countries call things different names. Take for example a project I recently did to come up with novelty sweet ideas, I needed to take into account that what we call sweets in the UK, people in the US will call candy.
Once you have a few keywords to start with you can just a Google Image Search, this makes it nice and easy to just scan through and see if there is anything currently on the market like your idea. After you have done this also do a Google Product Search and basic Google search. Doing these preliminary searches may immediately eliminate some ideas or let you know if its worth investigating further and starting a patent search. I am just a novice at patent searches but have found some really useful resources and tutorials below.
Spencer Brown is an Eco friendly/Green inventor, you may heave heard of his company Rent a Green Box, a company which takes trash and recycles it into eco-friendly green plastic boxes which people hire when they are moving home. Not only does this mean that waste is being put to good use, but also there is no additional waste from the cardboard boxes people would usually use to help them move their stuff.
In the video below you can see Spencer talking about Rent a Green Box and some of his other inventions, but then Spencer has also created a series of videos aimed at educating people about invention (also below).
Spencer Brown talks about Inventing and Renta a Green Box
If your are an inventor or creative you will know the difficulty of trying protect your ideas without spending a fortune. The idea of keeping an inventors journal as a form of proving the date when you conceived an idea is well known, but it’s a pain remembering to keep on getting it signed and dated by someone impartial (non family). To be honest I really don’t want to show people some of my idea notebooks as they might think I was quite eccentric as I literally put anything in the books that I think of, good or bad, strange or sensible.
A site like Protect Your Ideas might come in useful for situations when you want a more definite confirmation of the date you came up with your ideas. www.protectyourideas.com is a place where you can upload your ideas and get them date stamped. Although I have just signed up and I am always a little cautious about things like this, it is a site founded by John Woollcombe, a barrister and specialist in intellectual property (IP) law which gives it some credibility.
Another feature of the site I also thought could come in useful, is the ability to offer, and have electronically accepted, an NDA (Non Disclosure Agreement). This could be extremely helpful for collaborating online with other creatives, manufacturers or potential licensees and would prove that the recipient had looked at a specific idea.
According to the website
Protect Your Ideas is the first website to provide robust ways to help you protect a new idea at the early stage of development; ie the most risky stage. At a time when you’re worried someone will steal your idea, Protect Your Ideas has secure, practical and easy-to-use solutions that will help. It’s also a lot less expensive than the lawyers who will advise about copyright or patent law.
If anyone else has tried the service I would love to hear how you got on.