I’ve lost count of the number of times people say “I’ve filed my provisional patent. What happens now? How do I license it? and Where’s the money?”
Let me approach the answer from that of making an income. There is a secret…
First, I’m not a Patent Attorney, so this is a general overview of the patenting process and you must only rely on the advice of a good, qualified Patent Attorney. And the costs here are all for your guidance and vary from country to country and technology to technology – ask your attorney for an estimate.
Your provisional filing gives you an international “priority date” and you have a year (only twelve months) to make limited changes. Your attorney will be able to tell you if the changes will result in multiple priority dates or even a completely new filing.
When the year is up everything is basically set in stone. If you only intend filing in specific countries, then that’s around $5 – $10,000 per country and then the application can proceed through the
Examination, Acceptance and Grant stages.
Examination is a cycle of review and response to verify the novelty and inventive aspects of your invention. The arguments and submissions may include amendments to your patent filing. Each cycle costs around $1 – 5,000 per time depending on the type of invention. When the patent examiner accepts your claims and if there are no third party objections, the patent is granted. You now have protection from the priority date and the patent is enforceable.
You remember I mentioned you have a decision at twelve months after first filing? Well, broadly you have four options at this point:
The first option we’ve already mentioned – that’s continuing to file in multiple countries at $5 – 10,000 per country followed by review response cycles until you reach grant in each country.
For more than a few countries, this is potentially an expensive option so early in a patent’s life. So, you may elect to file a PCT application. This costs around $9 – 15,000 and involves a preliminary, non-binding search. You may choose to ignore the results of the search or elect to have a few cycles of review and response until the patent examiners are satisfied you have a novel and inventive application. This work is not binding but could be useful evidence for investors and may reduce fees for some countries in the future. Then at 30 or 31 months after your earliest provisional filing you’ll need to decide which countries to file in at an average of $5 – 10,000 per time as before.
There are two key benefits of this approach, firstly after the provisional and PCT filings, the requirement for significant funds for filing in individual countries is delayed by 18 months. And secondly, when you eventually file in each country, there should be fewer review/response cycles, although some jurisdictions such as the USA, Japan and China generally ignore the PCT search. The upshot is that, you can delay the need for funds and may reduce the need for funds.
Assuming you didn’t publish anything, your third option is to abandon the provisional application and refile. You must withdraw the original application before the year is up though.
And finally, you can simply abandon the whole process and restart with a completely new invention or IP strategy.
So, you can see that there are only three real options at the twelve months stage. It’s a big decision with significant and escalating costs attached. So, what can you do now to make that decision easier and safer?
There are four key questions to answer about your invention: Is it complete? Does it have value? Is the idea novel? And is it inventive? Fortunately, there are two things you can do right now to start answering all these questions: Commercial Discovery and an International Type Search.
Commercial Discovery is a process which will answer the first two questions – is it complete? and is there value in the invention? Lean Commercialisation provides you with a process to answer these questions, so you find your first paying customers, discover new uses, write a design brief, raise funds (if necessary), or license the invention. In addition, you may be able to improve the strength of your patent application. Lean Commercialisation costs around $5,000 and has the aim of converting your idea into cash as quickly and efficiently as possible. It minimises the costs, time and emotional energy required to take an idea from the drawing board into real life where it can have global impact.
The second thing you can do is request an optional International Type Search. The Australian patent office will carry out an early non-binding search for you and report on any problems with your claims for novelty or inventiveness. This gives you time to modify your patent document before it gets set in stone at the twelve-month stage or even stop if there is no clear patentability path.
IP Australia will charge you $950 for a DIY International Type Search although going through an attorney may be more effective since they’ll set up the search correctly and interpret the results usually for an additional $1 – 2,000. Another option is to try an off-shore Search Provider although there will always be issues with quality and relevance.
Before I finish, I will mention a couple of other areas you should be aware of: there are other ways of protecting IP other than patents; how do you know if someone else has already patented it, but it hasn’t been published yet; and failing to provide full disclosure (or hiding key aspects) may invalidate the application at a later stage. While many risks can be mitigated they can’t be eliminated.
Right at the beginning I mentioned there is a secret to realising your dream. Are you ready for it?
While a patent can stop someone copying your exploiting your invention, you’ve still got to make money from selling it. The secret is to act now before costs start in a year’s time and then escalate 2½ years later as you go international.
The clock has started. Now is the time to act.
For commercial discovery: Check out the Lean Commercialisation Program. One of our facilitators will spend a complimentary hour with you in person or video conference which could change your life forever.
For the International Type Search: Speak to your patent attorney who will advise you on the best way to organise the search and complete the whole patenting process.