Patent Drafting

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We partner with a few carefully selected and proven Intellectual Property Specialists to support our clients in protecting their innovations. Vicki from Strachan IP has helpfully written this section of our website to help you understand more about IP strategy.

At Strachan IP, we endeavour to get to know you, your product and your commercial aspirations for it right from the start. This may take one (or two or more) virtual meetings, all of which are free of charge and obligation and held in the strictest of confidence. With your permission, we may also consult with your designer at D2M Innovation, if appropriate, so that we can get a comprehensive overview of your product, the potential size and value of your market, and any other relevant commercial information, so that we can ensure that our advice and recommendations are properly tailored to protect *your* business.

Our Process

What is patentable?

A patent can be obtained for a product, process, system, and even a “kit of parts”. The basic requirements are that a) it must have at least one novel technical feature, and b) that novel technical feature must involve a so-called “inventive step”, i.e. it must be more than an “obvious” workshop modification of what has gone before. And these requirements are assessed against everything published, or otherwise in the public domain worldwide before the patent application is filed. So, how do we assess what is patentable?

Novelty

This is a fairly easy thing to assess: either your innovation has something technically novel about it, or it doesn’t. It is almost a matter of fact.

Inventive Step

Inventive step is a little bit more subjective, and can be more difficult to assess. We talked in detail about “inventive step” in our blog: [The truth about obviousness in patent law](https://strachanip.co.uk/the-truth-about-obviousness-in-patent-law/), so we will just reiterate here that you should avoid dismissing a novel technical feature as “obvious” without speaking to a Chartered patent attorney; especially if it is an important part of your unique selling point (USP), because even a small degree of inventiveness may be enough to warrant a patent.

What is patentable in computer-implemented inventions?

Some innovators in the field of software development are under the misconception that software-based innovation is not patentable. But nothing could be further from the truth!

It is true that a computer-implemented invention needs to have a novel feature that offers some ‘technical advance’, and the law around that latter term is complex and rather laborious. But again, our best advice is that if protecting your software-based innovation would protect your revenue stream, not to mention offer the Patent Box relief, it is worth consulting a Chartered patent attorney before dismissing the innovation as unpatentable.

What is involved in the patent process?

The patent process in the UK (and most other countries) is relatively long (usually 3-4 years), and there are various deadline-driven stages and procedures that need to be followed. To the uninitiated, this process can seem complex and laborious, but we will be there to help you every step of the way.

The starting point for all patents is to draft a patent specification. A patent specification is a complete record of your invention (in the form that it is at the time of drafting) and includes:

– An introduction, that ‘sets the scene’ and describes the ‘problem’ or deficiency that your invention seeks to address;
– Statements of invention, which are legal phrases that define the scope of the patent protection being sought (i.e. precisely what we hope to be able to prevent third parties from doing), and match the Claims (mentioned below) in substance, rather than form;
– A Specific Description, which is a detailed description of at least one version of your invention and which is required to be “clear and complete enough for the invention to be reproduced without undue experiment”. This last phrase is important, because, while we need to be fairly clear and open about the invention in this section, we do not have to provide a step by step “roadmap”. This can be particularly pertinent for computer-implemented inventions, because it means that we would not, for example, have to divulge the software code devised to implement the invention. Drawings will also be included and referenced in this section.
– Claims, which usually match the Statements of Invention (in a slightly different format) and, again, act to define the scope of protection sought;
– An abstract, which is a very brief overview of the invention.

Once the patent specification has been drafted, it is filed at the UK Patent Office (“UKIPO”), usually with a search request (and payment of search fees).

The rest of a typical patent process is summarised as follows:

3-6 months after filing, a search report would be issued, detailing any documents found by the Examiner that they think might be relevant to the patentability of your invention;
By the end of 12 months after filing the UK application, we must file any corresponding overseas applications. We also recommend, at this time, “completing” any formalities outstanding on the UK application, such as filing an abstract (which can be omitted from the specification at the time of filing), formal drawings or a so-called statement of inventorship;
Around 18 months after filing, the application is published;
6 months after publication, a request for examination must be filed; It is worth noting here that some people opt to file a request combined search and examination right at the start of the process and whether or not this i an appropriate avenue for you can be discussed with your patent attorney.
After that, and during the subsequent couple of years, the UKIPO will issue an examination report, detailing any objections it may have to the application (and, usually, referencing the documents found at the search stage), and a deadline is set for filing a response, usually in the form of changes to the claims and arguments. There may be more than one round of examination reports, before…
Acceptance and Grant of the patent.
Annual renewal fees are payable to the UKIPO to maintain the patent in force for the full 20 years from filing (if you wish).

Investment and Funding

There has been a steady transition, across the global commercial landscape, toward knowledge-based economies. And, therefore, the value of companies is increasingly determined by intangible assets, including, not just patents, designs and trade marks, but also things like know-how, trade secrets, goodwill and technological skills.

It won’t come as a great surprise then that public policymakers are, not only working to boost business awareness of the importance of using IP rights to protect intangible assets against unauthorized use or copying by competitors, but actively advocating IP rights as a “should have” form of insurance for protecting market share and revenue streams.

In real terms, this means that potential investors will look at what registered IP you have to protect their investment, grant funding bodies often look at what patents have (or will be) filed as a result of a particular project, and even R&D tax claims are strengthened by the fact that a patent application has been filed as a result of the R&D project in question.

And let’s not forget Patent Box tax relief.

Customs Registration

If you have a registered design in the UK or EU, you can use a customs registration process to enlist the help of Border Force (or their EU counterparts) to stop infringing copies manufactured overseas from even entering your market territory.

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Third Party Sales Platforms

If a copy of your product is listed on a third party sales platform such as Amazon, you can report it as an infringement of your patent or registered design, and the copy listing will usually be suspended unless and until the dispute has been resolved to your satisfaction.

I am very pleased to recommend Vicki Strachan and her company Strachan IP. They have recently completed an Patent application for us. During the process Vicki has always been very approachable, quick to respond and professional in every aspect of the process. The work was completed ahead of time which has really helped move forward with our project. I would not hessite to use Strachan IP again for future projects.

 /5

Gary Edwards, MD at Cygnet Fabrications Ltd

FAQs

Should you file a patent, register a design or do both?

There is no real ‘one size fits all’ IP filing strategy, but we can help you to decide what’s best for your business, by really delving deep into, not just the product, but the market arena you’ll be entering and your commercial aspirations for it.

When should I file a patent/design application?

You can’t disclose your invention to anyone except in confidence before a patent application is filed. However, tempting though it is to get an early filing date and ‘plant your flag’, so to speak, you only have 12 months from that initial UK filing to “top up” your application with further technical detail arising from the development process and to file corresponding overseas applications (if overseas protection is needed). And 12 months is not a long time in the field of product development. Ideally, at this 12-month point, the technical elements of your product will be more or less finalised and you will have a clear (ish) idea of your manufacturing, licensing and sales strategies. So, using your product development timeline, try to work back from that point to decide on the best time to file.

Registered designs protect the outward appearance of a product, so that must be finalized before you file applications for registration, but again (and although there are some ‘grace periods in some countries), you should ideally file your UK design application before there vis any public disclosure of your new product. You then have six months within which to file any corresponding overseas applications for design registration, where applicable.

When should I consult a patent attorney?

A good patent attorney, engaged early in the process, should be able to help you with all of this, and demonstrate the benefits of early IP advice and guidance during any product development cycle.

What is drafting a patent?

The cost of drafting a patent application in the UK can vary significantly depending on several factors, such as the complexity of the invention, the field of technology, the type of patent application, and the professional fees of the patent attorney. Here’s a breakdown of the typical costs involved:

Professional Fees: The majority of the cost will be the fees charged by a patent attorney for drafting the application. For a relatively straightforward invention, fees might range from £3,000 to £5,000. For more complex technologies, such as those in the biotech or telecommunications fields, fees can increase to £7,000 or more.
Patent Office Fees: The UK Intellectual Property Office (UKIPO) charges fees for filing, search, examination, and granting of a patent. The initial filing fee is relatively low, about £60, with a search fee of approximately £150 and an examination fee around £100. If the application is successful, a grant fee also applies.
Additional Costs: If your patent application requires extensive prior art searches, detailed drawings, or multiple iterations of drafting to clarify the invention’s scope and claims, these will add to the overall cost. Furthermore, if you need to respond to objections from the patent office, this can also lead to additional expenses.
International Protection: If you plan to protect your invention in other countries, there are further costs involved, including international filing fees under the Patent Cooperation Treaty (PCT) or through direct filings in other countries, which can significantly increase the total expense.

Overall, for a UK patent application, you can generally expect to spend between £4,000 and £8,000 from start to finish for drafting and filing, depending on the complexity of the invention and the expertise required. This estimate does not include costs for maintaining the patent, potential legal fees for advice or disputes, nor international patent application fees.

How much does it cost to draft a patent?

Professional Fees: The majority of the cost will be the fees charged by a patent attorney for drafting the application. For a relatively straightforward invention, fees might range from £3,000 to £5,000. For more complex technologies, such as those in the biotech or telecommunications fields, fees can increase to £7,000 or more.
Patent Office Fees: The UK Intellectual Property Office (UKIPO) charges fees for filing, search, examination, and granting of a patent. The initial filing fee is relatively low, about £60, with a search fee of approximately £150 and an examination fee around £100. If the application is successful, a grant fee also applies.
Additional Costs: If your patent application requires extensive prior art searches, detailed drawings, or multiple iterations of drafting to clarify the invention’s scope and claims, these will add to the overall cost. Furthermore, if you need to respond to objections from the patent office, this can also lead to additional expenses.
International Protection: If you plan to protect your invention in other countries, there are further costs involved, including international filing fees under the Patent Cooperation Treaty (PCT) or through direct filings in other countries, which can significantly increase the total expense.

Overview of Patent Drafting

Let’s start with the basics

For a product, and leaving aside the marketing elements such as brand names and logos, there tend to be two types of registered intellectual property that can be used to stop your competitors from copying your innovation and muscling in on your market share. In some cases, a patent may be relevant, to protect a novel technical concept, whereas in other cases, a registered design may be more appropriate, to protect the outward appearance of your product. And sometimes, both may be appropriate and recommended, depending on the potential value of the product, your business model, and the market arena you will be entering, especially the nature and geographical location of your biggest potential competitors.

What is a patent?

A patent is a piece of registered intellectual property (IP) that protects technical innovation. If you have a patent for your product, process or system (or part of it), you can stop your competitors from using the same technical innovation for up to twenty years.

To be patentable, the technical innovation must include at least one novel feature, and that novel technical feature must represent a so-called “inventive step”, i.e. it must be something more than a simple workshop modification of what is already known.

However, it does not need to be an enormous scientific breakthrough or a piece of disruptive technology. In fact, taking terminology directly from the case law on the subject of inventiveness, a “scintilla” of inventiveness can be sufficient for an invention to be patentable, and part of the invention can even lie in the identification of the problem it purports to solve, even if the solution could then be said to be “obvious”. So, it is important not to dismiss something as “obvious” and, therefore, not patentable, before this has been properly assessed. If your product or process has at least one novel technical feature, and that technical novelty is important in some way to your USP, then it is worth exploring whether or not patent protection would be the best way to protect it.

What is a Registered Design?

A registered design protects the outward appearance of a product, rather than any underlying technical concept. If there is something distinctive about the outward appearance of your product, or if a lot of design effort has gone into the way something looks, and/or we are unable to identify a patentable technical concept within your new product, then registered design protection may be more appropriate.

The benefits of patents vs registered designs

Because patents protect underlying technical concepts, irrespective of how the product looks, they are viewed as a “stronger” form of IP protection than registered designs. Also, if you have a patent for your product (or even a small part of it), you can take advantage of the Government’s Patent Box tax relief, which can represent significant tax savings and, therefore, effectively increase your profit margins.

However, patents are significantly more costly and take a lot more time to secure than registered designs. Registered designs can be granted within a matter of weeks with much less cost outlay and, as such, can give you quick and relatively cheap protection that is enforceable against any copycats that emerge, which can be especially advantageous during the early months of commercialization. If you think infringing copies of your product may enter the country from an overseas source, you can register your registered design at Border Control, which will then help you to stop infringing copies of your product entering your market. Also, having a registered design gives you the ammunition you need to take any early copycats down from third party selling sites like Amazon and Shopify. So although they are not as “strong” as patents, in that they only protect the appearance of your product, rather than the underlying concept, they can be very powerful, especially when you first start commercializing your product.

Here is why having a patent and/or a registered design is crucial for your product

It’s quite simple really. Although some lesser ‘automatic’ unregistered IP rights exist, they are very limited and it is usually unwise to try and rely on them to protect your revenue stream, especially if you have invested a significant amount of time, effort and money into developing your product. If you don’t have a patent, or at least a registered design, for your product, then there will be little, if anything, that can be done to stop your competitors from copying your idea and bringing their own version to market. And they are likely to be able to undercut you on price then, because they won’t have had the overheads you have had in the product development process.

A patent can be a hugely powerful monopoly. Not only can it stop your competitors from doing the same, and protect your revenue stream, but it can also act as a deterrent to others trying to enter your market. You may start your business around a ‘core’ patent, but as you scale up your business, you can use additional patents to ‘ring fence’ your technology, and help to keep your competitors at bay as your market share grows. So, can patents play an essential role in business growth? Without doubt.

And don’t forget that Patent Box tax relief can provide significant savings, and effectively increase your profit margin.

On the other hand, registered designs are quick and relatively cheap to secure and provide the following potential benefits to your business, especially when you first start commercializing your product:

Customs Registration

Third Party Sales Platforms

If a copy of your product is listed on a third party sales platform such as Amazon, you can report it as an infringement of your registered design, and the copy listing will usually be suspended unless and until the dispute has been resolved to your satisfaction.

Court Proceedings

You cannot enforce an IP right through the courts unless and until it is granted/registered. This can take 3+ years for a patent, during which time any copies in the market could have seriously damaged your market share and/or your brand. There is, of course, pre-court correspondence that can be entered into to try and persuade the infringer to stop, but ultimately you cannot issue court proceedings for patent infringement until the patent is granted…and the infringer’s legal representative will know that. If you have a registered design, however, your options for legal recourse in relation to direct copies are much more robust, and issuing early court proceedings can help to stop infringers before too much damage is done.