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Patenting your invention

1. Introduction

A patent application is a technical, legal document and drafting one can be very complicated. It is therefore recommended that professional help should be sought from a chartered patent agent who will guide you through the complete application process.

This factsheet gives you some guidelines on how to choose a suitable patent agent and describes the services they offer.

2. What services does a patent agent offer?

Patent agents write patent applications describing their client's invention in legal terms and then correspond with either the Patent Office in the UK or European Patent Office in order to convince the examiner to grant the patent. Once a patent is granted, a patent agent can advise you on patent enforcement if you believe someone is infringing your patent.

The type of work they carry out includes:

(i) Meeting with clients to understand what they have invented.

(ii) Conducting searches of patent records to establish the originality and validity of an invention before an application is made, although many subcontract this work to researchers or patent libraries.

(iii) Studying and analysing scientific or technical documents, including previously published patent documents, to assess the client's invention to find out what is new and inventive about it.

(iv) Writing detailed descriptions of inventions in very precise legal terms (patent drafting), which will form the basis for patents to be granted by patent offices in different parts of the world.

(v) Ensuring application and renewal deadlines are met.

(vi) Corresponding with foreign attorneys when dealing with applications for patent protection overseas.

(vii) Working with solicitors and barristers to defend or enforce patents.

(viii) Advising clients on enforcement of their rights, for instance if a third party is infringing their granted patent.

(ix) Challenging infringements on behalf of a client whose application for a patent has been successful.

(x) Working as an advocate in cases before the Patent County Court.

(xi) Advising clients whether or not their business activities will infringe someone else's granted patent.

(xii) Advising on other intellectual property rights, for example, designs or trade marks.

A patent agent may also be able to advise you about the commercial exploitation of your invention. You can discuss your invention freely with a patent agent because this disclosure will be in confidence.

3. How do you find a patent agent?

The Chartered Institute of Patent Agents has a directory containing the names and contact details of chartered patent agents in the UK. The directory can be accessed on their website (www.cipa.org.uk) or obtained by contacting the Institute directly. The Directory is also held in stock by most large libraries.

Local patent agents are also listed in the Yellow Pages, although you will have to check their qualifications and area of expertise with them individually. Many patent agents have their own website from which you will be able to gain some initial information. Your solicitor may also be able to advise you of a patent agent specialising in your particular field, and some solicitors offer patent agency services themselves. In addition, a colleague or fellow inventor may be able personally to recommend a patent agent they have successfully worked with in the past

4. How do you choose the right patent agent?

Your patent agent should be someone who has experience of preparing patent claims in the particular field relevant to your product. A patent agent who knows what developments are taking place in the field you are involved in is more likely to be able to have a true appreciation of your invention in relation to other products in the market.

A good patent agent will also be able to give preliminary advice as to whether it is worth proceeding with a patenting program, and how much it will cost.

If you plan to market your invention abroad, you will need to check that the patent agent you engage in the UK has contacts with good agents in the countries which you consider to be the most important markets for your invention. Ideally these agents should also be experts in the relevant field of technology, as they will be responding to any objections to your patent from a local patent office.

In the early stages you may need help on confidentiality issues. As matters progress, you may need help on licensing, research and development, and joint venture agreements. A patent agent who is familiar with how agreements are structured and what the possibilities are will be of great help, even if ultimately you seek legal advice from a solicitor before committing yourself to contracts. If your patent agent is not in a position to offer such advice, you should at least establish whether he has good contacts with local solicitors who are able to assist as your application progresses

A good patent agent will tell you about the costs that are likely to be incurred and the timing for these payments.

5. How do you monitor their service?

Like all other services that you buy, you need to monitor continually the service that you are getting and assess whether it is value for money.

Stay in regular contact with your patent agent and agree dates by which they will update you on progress. If you are not satisfied with anything, or feel attention to detail is being ignored, raise your concern immediately. Errors can be costly and time consuming.

Clearly one of the best indications that they are providing a good service is the successful application for a patent.

The Chartered Institute of Patent Agents (CIPA) has rules of professional conduct to which all of its members must adhere. Copies of these rules are available from the CIPA website (www.cipa.org.uk). There is also a leaflet on how to complain about the service provided by a patent agent. All registered patent agents should have a formal procedure to resolve disputes with clients.

6. How much will it cost?

Unless you have experience of drafting patent applications, or are very unwilling to risk any money on your patent application, it is usually a false economy to do it yourself. The cost of a patent agent's professional services in drafting a new patent application will typically be about £700 to £1,000 + VAT but may be substantially greater if the invention is a complicated one.

CIPA members will give 45 minutes initial advice and guidance free of charge. If you prepare your questions you can cover a lot of ground in that time.

Most patent agents are well aware of the financial difficulties inventors face, and will do all they reasonably can to minimise your costs as long as you co-operate fully, both with them and with the patent system. Like solicitors, they can only act on a client's instructions, so costs depend to a large degree on how sensible and timely your instructions are. These should be based on the advice your patent agent gives you, so listen to that advice carefully and don't ignore it without strong justification.

7. Hints and tips

(i) Time invested in finding a patent agent who understands your product and can help with your plans for commercialisation is not wasted. Bearing in mind the significant cost involved in patenting, the correct decision at the outset will greatly increase your chances that your money is well spent.

(ii) Many public libraries with patent sections are now members of the Patents Information Network and offer general assistance and searching facilities, although these will usually refer clients to a qualified agent or solicitor for specialist legal advice. Do have a look at a new patent search facility from the Patent Office espacenet.

(iii) The Copyright, Designs and Patents Act 1988 makes it illegal to claim to be a patent agent unless fully qualified and included in the statutory register of patent agents.

Useful Contacts

Chartered Institute of Patent Agents

The Institute established the Rules of Conduct to which patent agents must adhere, and promotes the education, training, and status of patent agents.
95 Chancery Lane
London
WC2A 1DT
Tel: (020) 7405 9450
Website: http://www.cipa.org.uk/

Patent Office

The role of the Patent Office is to help stimulate innovation and raise the international competitiveness of British industry through Intellectual Property Rights.
Concept House
Cardiff Road
Newport
NP10 8QQ
Tel: 0845 950 0505
Website: http://www.patent.gov.uk/
E-mail: enquiries@patent.gov.uk

Institute of Patentees and Inventors

The Institute offers its members advice and guidance on all aspects of inventing from idea conception to innovation and development.
Suite 505a
Triumph House
189 Regent Street
London
W1B 4JY
Tel: (020) 7434 1818
Website: http://www.invent.org.uk/
E-mail: enquiries@invent.org.uk

European Patent Office

Tel: (00 49) 89 23 990
Website: http://www.european-patent-office.org/