Patent too expensive? Try this!

Financial assistance for your intellectual property – ideas here!

The Government of Canada has  financing assistance programs that could cover costs associated with protecting and acquiring intellectual property (IP) rights.

So you have an invention – now what?

I am asked almost daily “what is involved” in filing a patent application to protect an invention.  Every inventor is different in terms of his or her experience and technical background.  Here are some basic questions to have in mind that will make it easy for us to work together to have a successful patent application:

  1. Any prior public disclosure?  This can make it impossible to patent an invention.
  2. Patentability search – patent databases, web searching for similar products and competitors
  3. Drawings and written description so that the patent agent has something to work with
  4. Inventors and any duties to assign to an employer or investor?
  5. What countries do you want protection in?
  6. Is the benefit of patenting worth the considerable investment of thousands of dollars per country?

Foreign Filing Strategies

The question of what countries to file for invention protection: always a hard one. There is normally a timeframe (6 months to a year, depending on whether you have filed a utility patent or a design/trademark) in which one has to make the decision, and there are no do-overs.  

I present some considerations to help stir up your innate decision-making process.

For a North American company, the US is the biggest market and an obvious choice.  Furthermore, the USPTO acts quickly to provide feedback on patentability.  Canada is the other North American market, and the costs of patenting are relatively low, making it an easy decision for most businesses.

Mexico and the South American markets may be useful if you plan to do business further south. I recently had a patent go to grant in Mexico after a fairly reasonable prosecution,  which is promising.  Brazil is a large and sophisticated market.

Look at where your product will be or might be successful, or where your competitors operate, and file there.

Crossing the oceans, we find mega markets in Europe and Asia.

For Europe, Germany, France and the UK are large markets, and might be your first tier if budget is limited.  Traditionally, I prosecute European patents through the EPO and once granted, the invention is “validated” in each of about 28 European countries.    For designs and trademarks, there is an even easier process in Europe.  One application will do it all.

Caveat: Be careful not to assume that a country is covered by a community application in Europe – Norway is still outside of the fold.

Also, bear in mind that France, Germany, Luxembourg, Monaco, Switzerland/Liechtenstein and the United Kingdom do not require translations into their local language upon validation.  This is a consideration if you are on a budget and trying to decide which countries to validate your European patent in.

Asia is an important market with an increasingly sophisticated patent tribunals and court systems.  S. Korea, PRC (China), and Japan are the first tier.  Second tier could include Singapore, Vietnam, and Thailand, and India.

The middle east is another market that may interest you: Israel, Egypt, Saudi Arabia, Qatar, Oman, Bahrain, and the UAE are potential jurisdictions.

At the core, consider filing in depending on where you will be selling and where your competitors are, and  how long you want your patent list to look: Australia, New Zealand, the Philippines, Indonesia, and the Russian Federation.

Why “register” your Trademark / TM / Brand name

Since filing a trade-mark registration costs more at the outset than NOT filing it, and trade-mark rights really begin with use of the trade-mark in commerce rather than the filing, there has to be a good reason.

In fact, I can name six!

1. Prima facie evidence of ownership
2. Public notice of rights (on the Register)
3. Registered trade-marks are a clearly identifiable asset in licenses and purchase agreements.
4. More ways to attack infringers, passers off, and other disreputable parties.
5. Looks shinier / more professional
6. You can use the registered mark as a priority or foreign registration/use basis in other jurisdictions.

Maybe you have other ideas; please comment if you do…