INVENTORS AND ENTREPRENEURS FAQS

Q I've been told that patents are a waste of time, because they can be 'designed around'. Is it true?

A If your patent covers something that's commercially attractive, then it's a sure thing that someone will bend their wits to see how it can be designed around. The strength of a patent will depend on its relationship with the closest "prior art", that is, the closest arrangement to your invention previously known. If your invention is just a tweak or relatively minor improvement, then the patent may be relatively weak and easy to design around. However, even in such cases there is a commercial argument for filing a patent application, since the patent or patent application will generally cause your competitor time, energy, effort, cost and uncertainty to overcome, which will buy you additional time to exploit your monopoly in the marketplace. We have known cases where the mere fact of a granted patent has caused a competitor years of delay in bringing a competing product to market.

Q When is the best time to file a patent application? Is it as soon as possible or as late as possible?

A The argument for filing sooner is that you establish the earliest date possible for your filing date, which may be important for patentability. You are also reducing the risk of a disclosure occurring (whether by accident, or some other reason) which could affect the validity of your patent. Filing a patent application before meeting with potential partners means that your invention is defined and your ownership is safeguarded.

The argument for filing later and using, for example, a non-disclosure agreement (NDA) or confidentiality agreement, is that the filing of a patent application starts a process which has well defined timescales by which action must be taken and costs incurred. This process will put you under pressure to find partners, bring the product to market etc. The later the filing can be delayed, for example by the use of confidentiality or non disclosure agreements (NDA), the more the costs can be delayed.

In our experience, the risks of unclear ownership, lack of definition of the invention, accidental or unintended disclosure and delay in obtaining a filing date outweigh the advantages of delaying costs, and we would generally recommend filing sooner rather than later. However, you should seek professional advice in each specific situation.