Here is a blog post by Robert McDougall from Beck Greener, patent and trademark attorneys. We’ve been mentioning to a few people that the Patent Box offers a new use for patents in the UK, and we thought it only natural to get a patent attorney to weigh on the issue.

The following is a short discussion on general IP issues and to add to what Grant Tree has said on the Patent Box on this Blog.

General Intellectual Property (IP) considerations

Overall, when you start a company or develop a new project or service, it is advisable to consider the IP aspects of what you are doing before you start making progress in product development, branding strategy or start talking to third parties. ‘Consideration’ does not necessarily have to result in spending money in obtaining your own IP, but should at least be consideration of whether or not you are possibly infringing other people’s IP. For example, does your new company name or brand name infringe any third party registered trade marks? Does your intended product infringe any third party patents or registered designs?

When to consider filing for one or more patent applications?

Whilst certain start-up companies are not interested in patents at the outset because of other significant start-up costs, some companies may want to consider filing for one or more patent applications at a far earlier stage. This is especially the case for those companies who intend to roll out their inventive product quickly and wish to provide some form of protection to the product and optionally wish to take advantage of the Patent Box.

As soon as a company makes their invention publicly available in any way, for example selling a product incorporating the invention such that the invention is derivable from the product, discussing the invention un-confidentially at a business meeting etc., that public disclosure can be used to invalidate patent rights that the company files for afterwards. The golden rule for seeking patent protection is to file your patent application before making such disclosures. If you need to talk to external parties at an early stage in product development, make sure such discussions are in strict confidence. A non-disclosure agreement is an advisable option.

Patent costs

The costs of patenting your invention can vary greatly. The primary causes of this variability come from the country coverage you want patent protection in, the complexity of your invention and how much argumentation is required with the relevant patent offices to get your patent application to grant. The country coverage is under your control and the invention complexity is often primarily dependent upon your technology field and the particular invention. However, in typical patent prosecution where a company is seeking to obtain the broadest protection for their invention, one of the biggest unknown variables at the outset is the degree of argumentation required with the patent office examining the patent application/s. The reason for this is that the patent examiner will search for relevant earlier disclosures (prior art) and, more commonly than not, will provide objections to the breadth of scope of your protection. If the examiner finds no relevant objections, or the objections are dealt with simply, then the costs of prosecuting your patent application are reduced. If however the patent examiner finds a large amount of relevant material and raises many objections, the costs increase.

The Patent box and its associated patent costs

If a company wishes to obtain a patent primarily for taking advantage of the Patent Box, the costs associated with obtaining that patent have a greater likelihood of being lower than in typical patent prosecution. This comes about because of two main factors:

1. Companies only require a single “qualifying patent” associated with the product that they wish to claim relief on. A qualifying patent can be a UK or European patent, or a patent granted from certain EEA countries. In comparison to patents granted elsewhere, obtaining a UK patent can be relatively fast and inexpensive.
2. The provisions of the Patent Box require that the product, that you are seeking tax relief on, is covered by the granted claims of a qualifying patent regardless of how broad the scope of protection your granted patent has. A ‘Patent box’ oriented patent application can therefore be drafted with patent claims that are sufficiently ‘narrow’ in protective scope, but still cover the product. Drafting the claims in this manner typically reduces the available objections the examiner can raise based on prior art, thus giving a greater possibility of your patent application going to grant in a faster time and with reduced costs.

The figure of £10,000+ for obtaining a ‘patent’ is typically more common when filing a patent application at the European Patent Office (EPO) and seeking ‘broad’ protection. Obtaining a UK patent by filing a ‘narrow’ Patent box oriented application at the UK intellectual Property Office (UKIPO) will typically costs less than £10,000, in some circumstances less than £5000.

Dr Robert McDougall
UK and European Patent Attorney.
Beck Greener

[The above comments are not intended to be taken as detailed legal advice.]