Tips for Patents

Provisional Patent Filing

If you are not ready to spend a lot of money to file a regular application and pay a high filing fee, it will be very advantageous to file a Provisional application in the U.S. This gives you a one-year priority within which you can market your product, look for investors, continue to develop your product further, and study the market. A provisional application’s costs are cheaper in both professional fees and Patent office fees. At the end of the one-year period, you have the option to replace it with a regular patent application and claim priority of your Provisional filing date. The regular patent application should be filed in all countries where you are interested to later sell your products. Most of our clients use this routine.

Disclosing your invention: precautions

The first-time inventor frequently does not know that it is very critical to keep his invention a secret before filing. Even though there is a one-year grant period between public disclosure of the invention and the filing of a patent application in the U.S. and Canada, it is highly advisable to file an application before making the invention public to any entity. The reason for this is that any party who becomes aware of your invention may take advantage of the situation by filing for the same invention before you, or by copying your product and invalidating your patent in Court (assuming you sue them for patent infringement). Due to these facts, you should file at least a Provisional application in the U.S. to secure your filing date. This is also a very important step to take if you are planning to file an application in Europe, where there is an absolute novelty provision.

Who will mostly likely infringe your product?

In our practice, the most likely party to copy your product will not be the guy on the street, but your own sub-contractor, distributor, developer or any other party whom you may trust. In view of this fact, the best remedy is to file for a patent or design application before you approach these ‘trusted’ people. In case you are unable to file for an application into the Patent Office, absolutely get a Non-Disclosure Agreement between you and this party stipulating that they will not use the information for any purpose besides the one for which you will disclose your idea to them. It is advisable to use lawyer to draft such an agreement. Our firm can draft such an agreement for you *. As a word of warning, it is still legally better to file for an application then take a Non-Disclosure agreement, since an agreement is not 100% fool-proof.

Make a search to see if there are already patents for your idea before investing your money

It is highly advisable to make an infringement search and to get an opinion from a patent attorney before you make a financial commitment to manufacture your product, particularly if your investment will be very substantial. The reason for this is that if there is a valid patent existing for such a product, the patent holder may notify you that you are infringing their patent and you will be forced to deliver all non-sold goods, pay damages, and shut down your venture. Even if you unsure whether such patent covers your product, it is still highly advisable to ask a patent attorney for their opinion, since this opinion may be used later as a legal defense if you are sued for infringement; it shows that you did your homework, and the other party will be not able to claim damages for willful infringement. For your information, in such countries as the US, willful infringement may result in your obligation to pay treble (triple) damages.

What is the most practical invention to make money?

According to statistics, only 5% of patented inventions reach the market. The reason for this low turnover is the fact that not every invention is marketable, or that the patent owner is unable to sell the idea. According to our own experience, there are many different factors involved in bringing the invention to the market. One of the reasons is the inventor’s failure to convince established companies to buy into the inventor’s idea. In most cases, these companies are interested to buy into products that have a proven track record on the market. Another reason is a low profit margin (i.e. the cost of manufacture is too high compared to the sale price). The conclusion is, you have to think about not how grandiose you invention is, but in terms of manufacturing costs and volumes of sale. It is better to invent something that cost a penny to make, but sells in the millions, rather than an expensive item with a small market. Let the Rolexes and the Rolls Royces fight over their niche markets.

Where will it be financially advantageous to file for a patent application?

I get asked this question often, especially by the ambitious who are interested to obtain worldwide protection. These are the individuals who do not realize that there is no way of obtaining one worldwide patent. Certainly, it is possible to obtain one patent to cover most of Western Europe countries, or a patent covering Eurasian countries, but there is no such thing as a worldwide patent (yet). Keep in mind that the average cost of obtaining a European patent covering most of the highly-populated countries in Europe may run as much as $100,000US! This does not include maintenance fees that you have to pay during the life of this patent, which may run at least $5,000US per year at the beginning of the patent’s life and $30,000US per year at the end (20 years from filing). The question you have to ask yourself is: is it economically viable to spend so much money if you are not sure that you could recover your costs through sales? The other question is: if your product is infringed and you sue the infringer, how much can you recover? Patent professionals know that the only country in the world where you get considerable protection is the U.S. In the U.S., you may win up to 3 times the damages plus lawyers’ fees in case of willful infringement. Of course, you have to be prepared to shell out for very considerable professional fees, which, according to recent statistics, may be around $1 million US. Conclusion: before you decide to spend money on a patent in any country other than the U.S., investigate first whether their patent system provides you with enough legal protection. If not, you may just end up receiving a very expensive yet useless piece of paper.


	Latest News
		We represent one of the world's largest paintball manufacturers for creation and maintenance of their global IP portfolio We are retained by two of Canada's famous families to brand and protect their image and IP in Canada and the USA. Our firm was contracted by one of the largest manufacturers of PET containers to oversee the transfer of intellectual property from its newest acquisition, a German PET container manufacturer.