Patently the best route
Northern Ireland could be registering up to 200 more patents a year by 2030, according to Science Park data. Marie Walsh, patent attorney with Ansons, explains how innovators can best protect and exploit their intellectual property
When the Irish Technology Leadership Group visited Belfast recently, chair John Hartnett (a Silicon Valley-based based CEO) said: “Belfast can claim to be the capital of creativity in Europe.”
We have the raw talent — the essential components are there. And yet Northern Ireland is not registering the volumes of patents that one would expect.
In addition to Belfast, Ansons also has a presence in Dublin. We have seen how improved awareness of the application process and greater understanding of the support that's available can lead to a transformation in patent filings.
What are the benefits of patenting? A patent allows innovators:
- to create income through licensing or sale of IP rights;
- to ensure exclusivity in commercialising protected products;
- to increase market share and generate higher profit margins (through licensing);
- to increase the worth of business in the eyes of investors;
- to create positive PR opportunities in eyes of customers;
- to deter competitors by creating a barrier to market.
There are four initial steps innovators should follow going into the application process.
Step one: take advice. Yes, the patenting process will protect your IP but in obtaining a patent, you will be putting your ‘secret sauce' into the public domain. Knowing when and what to disclose are the key to your success as a business.
Step two: be sure of your ground. A patent in the United Kingdom will be granted for an invention which is: new; involves an inventive step; and is capable of industrial application. Be warned: a patent application must be filed before any public use or public disclosure of the invention, otherwise it cannot be considered ‘new'.
Step three: do a patent search and check existing IP rights. The last thing any business needs is to find months of research and development and funds wasted because another person’s or company’s patent is blocking the commercialisation.
Step four: explore the year-one benefits of initial application. Under the British system of patent law, an initial application provides a 12-month period before further costs are incurred.
Additional patent applications can also be filed, if necessary, to cover any (non-disclosed) modifications or improvements during this time. This first year also provides time for the innovator either to seek a licensee or funding, and/or to test and develop the invention as far as possible (while being covered by the initial UK application). Foreign patent applications, including, for example, an application at the European Patent Office, can also be filed within the 12-month period following the initial UK application while being entitled to claim the date of filing of the initial UK application.
So what are the fees? Costs for preparing and filing an initial UK patent application can be as low as £1,000 to £1,500 plus VAT. However, Ansons recommends that applicants file their initial UK application with a request that the UK Intellectual Property Office (UKIPO) carry out a search on the invention. This requires that patent claims be included in the application and adds about £700-£800 to the initial cost.
In our experience this is well worth doing as a patent search is carried out and this helps to make key decisions relating to the patent protection. Costs vary after the filing stage depending on technology and complexity.
Patents offer long-term protection. A granted patent can last for up to 20 years, However, it must be kept in force via annual renewal fees from the end of the fourth year. If these fees are not paid the patent lapses and cannot then be enforced.
Northern Ireland is creating a vibrant innovation eco-system, and patenting is a necessary waypoint in the path to its commercialisation.
This process might seem to be daunting and complex, but it can be negotiated with relative ease with the right advice.