What to expect when working with an IP attorney

January 2020

What to expect when working with an IP attorney

Intellectual property (IP) rights such as patents, designs and trademarks are extremely valuable assets for any business and are possibly amongst one of the most important assets a business can possess. As an example, a patent has the ability to allow only certain individuals to use an invention at the exclusion of all others. On the other hand, without such protection in place, competitors would essentially be free to utilise your inventions free of charge. That is why it is essential that entrepreneurs adequately protect their Intellectual Property to safeguard any investments they make.

As well as protecting your investments, IP rights are important as they set your business apart from competitors, they can be sold or licenced to provide important revenue streams, they can form part of your marketing or branding strategy and can be used as security for loans.

However, we know that for first time entrepreneurs who are looking to protect their inventions, obtaining Intellectual Property protection can feel like a daunting process.

When to instruct a patent attorney

A poorly written patent application can fall at the first hurdle, so it is important to engage the services of a professional patent attorney who has the experience and knowledge to help your application succeed.

At Secerna, we are always happy to hear from entrepreneurs and offer advice at all stages of the development of their inventions. It’s important to mention that, when choosing to proceed with a formal patent application, it is vital that your invention be disclosed in a patent application with enough detail that would allow a skilled person in that particular field to make or utilise the invention. Sharing this level of detail can feel counterintuitive, but it is crucial for making sure your intellectual property can be protected.

You cannot patent a time machine if you don’t know how to make one!

Getting to grips with the tech

One of the first things a patent attorney will do is sit down with you and go through all the details of your invention(s). We need to learn everything about the invention and the field(s) in which it will be used.

This process can sometimes involve what may seem like endless questions. Your attorney isn’t trying to catch you out, it is simply so we can get to know all the details of the invention and truly understand all the nuances of your product. A diligent IP attorney will also be reading around your industry and/or applying industry knowledge they have already to understand every aspect of the invention and the arena in which it will operate. This is all done to give you the best advice and prepare the patent specification paperwork so that the patent application process proceeds as smoothly as possible.

Patent specifications

Once we have a clear understanding of your invention, your attorney will then have enough details to draw up a patent specification. It is this specification which will form the basis of your patent application and will in principle determine whether your application will be granted.

This is where your patent attorney’s knowledge and experience come into its own. The patent specification should contain a detailed description of the invention accompanied by any technical drawings necessary to describe the invention, as well as an abstract and some claims. An experienced patent attorney knows exactly what a patent examiner will be looking for.

The claims are the most important part of the patent specification, as it is those words that will define the invention and the scope of protection provided if a patent is subsequently granted. Whilst it would commonly be your patent attorney who will choose the wording, at Secerna we see it as a collaborative exercise in which we work together to select the words that have the best chance of reaching a common aim: a granted patent for your invention.

Filing

Once the patent specification has been prepared, it is then filed with a patent office. For companies or individuals based in the UK, this will typically be the UK Intellectual Property Office. For companies who want to obtain protection overseas, foreign applications also need to be filed in the countries where protection is desired. It is after filing the application that a patent examiner will pick up the case, carry out an investigation and apply certain tests to ascertain if the invention is described clearly and in such a way that a skilled person would be able to use or make it.

The examiner will also look at the invention from a technical standpoint and carry out a search for any earlier publications, technical literature or UK and foreign patent specifications to make sure that the invention defined by the claims is new or novel and not obvious. They may also consider other legal matters that affect the acceptability of the monopoly claimed by the applicant before writing an initial report.

At this stage your patent attorney will decide whether to proceed with the application as it is, or whether the application needs to be amended to overcome any objections raised by the patent examiner.

Negotiation

Often there is a period of negotiation with the examiner over the specific wording and phrases used to define the scope of protection for the invention. This shouldn’t be viewed as a negative as it ensures that you are eventually awarded with a patent that provides a fair and reasonable scope for your invention.

Timescales

As with many things, it is very difficult to say how long it will take for a patent to be awarded as there are so many variables, including the territories you are filing in and how much negotiation is required. Typically, you can expect to have to wait between four and six years on average in most countries for an examiner to be satisfied and grant a patent.

Whilst it is by no means a quick process, the benefits of protecting your intellectual property are well worth investing in. We have worked with entrepreneurs and inventors around the world to help them protect their intellectual property. For help and advice with patent applications, contact our experienced team.

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