Steps to a Patent

[Pope John 11]

I have come up with an idea a few days ago that I am trying to patent. I am looking for advice on the correct steps to take in fulfilling my idea as a patent.

I have done some research into some patent websites, & while I have not done a complete search of all the worlds patents outthere, I believe that I can get this patented.

I also have a name for a website which I could buy for $11/per year. Should I get a web designer to set this up now?

I also have a rough sketch of a trademark, when I say rough, its rough. Should I get a web designer to set this up now?

Appreciate any advice & any thoughts.

I would also appreciate it if you could clearly state if you have patented something in the past.

Appreciate your comments

 

[WaterSprite]

Get yourself to a patent agent to discuss - they can talk you through the whole process. The most important thing right now is not to disclose the idea or make it publicly available until you have filed for patent protection. The website/trademark thing is not so urgent, I don't think, but registering the domain name should only take a jiffy. Presumably, the domain/trademark won't be of much value if you don't pursue the patent, so I'd get the patent info first before you spend cash on a web designer.

I have not patented anything myself but have been involved in the patent process for some companies for which I worked. Bear in mind that it can be expensive and takes a long time. The patent agent will do a search as part of their services. The searches need to be worldwide, even if you only want to patent in e.g. Ireland.

 

[Pope John 11]

Thanks for that WaterSprite.

Should I go to a patent agent in Ireland or lets say the US?

Should I enter a NDA with the patent agent, & if so, is this secure?

How long do they normally take, I know its an absurd question but just asking?

Should I go to the patents office in kilkenny?

I believe that its not patented, as I see the results of it not been patented happening everyday.

 

[WaterSprite]

Whether you go to someone here or in the US is a commercial decision based on your target market. A patent agent here can advise and deal with a US attorney on your behalf, which you may want to do if you want a personal contact here. If your main market would be the US, then I'd go to a US attorney myself. The costs would probably be higher, but you'd get the expertise. Make sure that whoever you go to can advise on applying in other jurisdictions (e.g. the PCT) so that you don't do anything at this early stage to jeopardise your ability to patent in other countries, if that's your intention.

Patents can take 3-5 years to process and can cost in the 10's of thousands. It's not something to enter into lightly, that's for sure. That said, after the initial search (which would probably cost a couple of grand), you'll have a better idea of whether it's worth continuing. There are numerous points along the way where you can stop the process.

I don't see why you'd go to the patents office in Kilkenny - is this to do a search? The patents office won't help you with drafting the application, which is the most important thing - to make sure that you've framed it correctly to get the most protection possible. That's the value added by a patent agent. In theory, you can do it yourself, but you leave yourself open to not drafting the claims properly and leaving loopholes in the application that make it easier for someone to engineer around the patent.

I'd advise you to meet with an Irish patent agent to talk through the process, timing and potential costs. Then do the same with a US attorney and see how you feel about each of them. Each will obviously be trying to get the business, but you will at least have two viewpoints. I'd imagine they'll want some payment in advance if they are dealing with you as an individual.

You probably don't need an NDA to consult with a patent attorney/agent - they are bound by common law duty of confidence. I can't see them signing an NDA before they talk to you in any case. If you are just meeting them as a preliminary matter, then don't go into the detail of the invention. Once you engage them, then they are bound by confidentiality.

 

[Pope John 11]

Thanks Watersprite,

Whether you go to someone here or in the US is a commercial decision based on your target market.

My target market would be worldwide, no limit. Language is a barrier though.

Patents can take 3-5 years to process and can cost in the 10's of thousands.

That long,surely there must be an approx. set figure for the costs.

It's not something to enter into lightly, that's for sure. That said, after the initial search (which would probably cost a couple of grand), you'll have a better idea of whether it's worth continuing. There are numerous points along the way where you can stop the process.

Ok

I'd advise you to meet with an Irish patent agent to talk through the process, timing and potential costs. Then do the same with a US attorney and see how you feel about each of them. Each will obviously be trying to get the business, but you will at least have two viewpoints. I'd imagine they'll want some payment in advance if they are dealing with you as an individual.

Good point, so I don't disclose any information at this stage?

You probably don't need an NDA to consult with a patent attorney/agent - they are bound by common law duty of confidence. I can't see them signing an NDA before they talk to you in any case.

Watersprite whats the purpose of NDA forms, if this is not the case?

Is it possible to get Dublin Enterprise interested, & if so, what would they be likely looking for in terms of % of the company if its set up.

 

[WaterSprite]

Thanks Watersprite,

My target market would be worldwide, no limit. Language is a barrier though.

That long,surely there must be an approx. set figure for the costs.

It depends on the complexity of the patent. For relatively complex software patents, it can cost $50k in the US alone. The patent agent will be able to give you a quote. For simple patents, it could be as low as $10k.

Good point, so I don't disclose any information at this stage?

Not to anyone you don't have to. For example, you don't have to disclose the detail of the invention to get quotes from patent agents. You should look at the Patent Office site for general information about patents. If something has been publicly disclosed anywhere in the world, it is not patentable.

Watersprite whats the purpose of NDA forms, if this is not the case?

Lawyers (that you engage) are bound by a common law duty of confidentiality. Other people are not - you'd use an NDA for potential investors, advisors etc.

Is it possible to get Dublin Enterprise interested, & if so, what would they be likely looking for in terms of % of the company if its set up.

No idea - you should ask them. I know they support start ups but it depends on the area of industry and likelihood of the creation of employment and exports. Also, no idea what %age would be appropriate - that depends on your business plan & amount you want invested. This is a different discussion and is more related to start-up funding - there's a fair amount of information here on AAM and also (for example) on Enterprise Ireland's site. You should talk to an EI rep or someone from your local Enterprise Board - that costs nothing and you'll get some good information. You should have any potential investors sign an NDA if you are disclosing your invention.

There's more information (startup site) and here (Enterprise Ireland)

 

[Pope John 11]

It depends on the complexity of the patent. For relatively complex software patents, it can cost $50k in the US alone. The patent agent will be able to give you a quote. For simple patents, it could be as low as $10k.)

Its quite simple really, thats the amazing thing,I can't still get my head around it, so your saying no NDA, discuss the idea with them, he will then be in a position to quote me?

Not to anyone you don't have to. For example, you don't have to disclose the detail of the invention to get quotes from patent agents.

So what do I say to them, I have an idea to be patented, could you give me a quote?

You should look at the Patent Office site for general information about patents. If something has been publicly disclosed anywhere in the world, it is not patentable.

Ok

Lawyers (that you engage) are bound by a common law duty of confidentiality. Other people are not - you'd use an NDA for potential investors, advisors etc.

Ok, its just that I don't understand how I could contest my idea in court, if the lawyer ran away with it.

No idea - you should ask them. I know they support start ups but it depends on the area of industry and likelihood of the creation of employment and exports. Also, no idea what %age would be appropriate - that depends on your business plan & amount you want invested. This is a different discussion and is more related to start-up funding - there's a fair amount of information here on AAM and also (for example) on Enterprise Ireland's site. You should talk to an EI rep or someone from your local Enterprise Board - that costs nothing and you'll get some good information. You should have any potential investors sign an NDA if you are disclosing your invention.

Ok, I have checked it up before,when I had another idea, I will go through it again.

There's more information (startup site) and here (Enterprise Ireland)

Yes I have seen this before too, will go through it.

By the way, if I could patent this, I will be giving you hugh praise

 

[WaterSprite]

Its quite simple really, thats the amazing thing,I can't still get my head around it, so your saying no NDA, discuss the idea with them, he will then be in a position to quote me?

Don't discuss the specifics, the "secret sauce" bit - you'll need to explain the general idea (e.g. "I have an idea for a new anti-hangover pill") so that they know what kind of area it's in. They will also be able to advise about what you need to do to keep your invention confidential.

I believe that e.g. simple mechanical devices would be easier to process (i.e. quicker to see if it can be patented, cheaper to describe the invention in the application) and would probably be cheaper than e.g. a highly technical software patent).

So what do I say to them, I have an idea to be patented, could you give me a quote?

Your problem will be having a patent agent taking you seriously (no offence) - they may not take kindly to an individual just knocking up. So I'd go in with a bit of a plan, such as that you have spoken/are speaking to EI, have set up (or about to set up) a company and know something about e.g. potential manufacture of your invention, including costs and materials, your market size, potential customers, distributors, revenue stream etc. Don't say that you've done research on the internet (apart from patent searching, but be specific on the types of things that may be similar to yours that are patented & try to be able to show the need that your product is addressing); say that you've taken preliminary advice from a commercial lawyer (ahem). If you sound like you know what you are talking about from commercial standpoint (even if it's not necessarily the route you will go down), then they are likely to give you a free hour or so to talk you through the process. Then yes, just ask for a quote and ask for a fee breakdown for each stage (drafting application, filing fees, different geographies, examination fees, time to grant, renewal fees). You may want to ask about a short term patent in Ireland (or provisional patent in the US) as they will be cheaper (quick and "easy") but are an additional expense if you go the whole hog in the end. You could probably get a provisional patent application done for a couple of thousand US$.

Ok, its just that I don't understand how I could contest my idea in court, if the lawyer ran away with it.

I don't think it's likely that the lawyer would run away with it. However, think of the common law duty of confidentiality as the same as having an NDA in place - you'd sue just the same, for a breach of confidentiality and get a court order (injunction) against them using your idea for their own benefit. Keep notes of who you meet and what you discuss. Again, note that it's only certain classes of people that have an inbuilt common law duty of confidentiality. If it makes you more comfortable, tell the patent agent in advance that you are concerned about confidentiality and ask them to assure you that the matters will be kept confidential - get them to confirm in writing/email. That's slightly OTT IMO but if it makes you more comfortable, then do it. It might alert them to the fact that you are inexperienced in this area and make it less likely that they'll give you a consult. But, sure if that happens with patent agent no 1, then just adjust and move to patent agent no 2. Cruickshanks and FR Kelly are two patent agents in Dublin.

By the way, if I could patent this, I will be giving you hugh praise

Ha! You can call it the "Spinning WaterSprite"

 

[Pope John 11]

you'll need to explain the general idea (e.g. "I have an idea for a new anti-hangover pill") so that they know what kind of area it's in. They will also be able to advise about what you need to do to keep your invention confidential.

I believe that e.g. simple mechanical devices would be easier to process (i.e. quicker to see if it can be patented, cheaper to describe the invention in the application) and would probably be cheaper than e.g. a highly technical software patent).

Thats fine

Your problem will be having a patent agent taking you seriously (no offence) - they may not take kindly to an individual just knocking up. So I'd go in with a bit of a plan, such as that you have spoken/are speaking to EI, have set up (or about to set up) a company and know something about e.g. potential manufacture of your invention, including costs and materials, your market size, potential customers, distributors, revenue stream etc. Don't say that you've done research on the internet (apart from patent searching, but be specific on the types of things that may be similar to yours that are patented & try to be able to show the need that your product is addressing); say that you've taken preliminary advice from a commercial lawyer (ahem). If you sound like you know what you are talking about from commercial standpoint (even if it's not necessarily the route you will go down), then they are likely to give you a free hour or so to talk you through the process. Then yes, just ask for a quote and ask for a fee breakdown for each stage (drafting application, filing fees, different geographies, examination fees, time to grant, renewal fees). You may want to ask about a short term patent in Ireland (or provisional patent in the US) as they will be cheaper (quick and "easy") but are an additional expense if you go the whole hog in the end. You could probably get a provisional patent application done for a couple of thousand US$.

Thats fine

I don't think it's likely that the lawyer would run away with it. However, think of the common law duty of confidentiality as the same as having an NDA in place - you'd sue just the same, for a breach of confidentiality and get a court order (injunction) against them using your idea for their own benefit. Keep notes of who you meet and what you discuss. Again, note that it's only certain classes of people that have an inbuilt common law duty of confidentiality. If it makes you more comfortable, tell the patent agent in advance that you are concerned about confidentiality and ask them to assure you that the matters will be kept confidential - get them to confirm in writing/email. That's slightly OTT IMO but if it makes you more comfortable, then do it. It might alert them to the fact that you are inexperienced in this area and make it less likely that they'll give you a consult. But, sure if that happens with patent agent no 1, then just adjust and move to patent agent no 2. Cruickshanks and FR Kelly are two patent agents in Dublin.

Thats fine. Its just a previous Mr. L pops into my head, when he legged it from the country.

 

[Pope John 11]

(e.g. the PCT)

 

[mickk]

I have just filed a patent. I went to cruikshank and they quoted me 800 for a patent search and 1800-2000 for the patent itself. I was happy with the price but wasn't confident enough of the patent agents understanding of the technical side of the product so I went through the list of Irish patent agents. I went with Dermot Roche because I saw from his website he has a degree in mechanical engineering so he would understand the technical side and physics involved with the product...

Here is the list if you want to find a local one: http://www.patentsoffice.ie/en/patents_agents.aspx