Published by Robert Games on 28th July 2011
Obtaining a patent in the UK is relatively inexpensive, compared with the cost of obtaining a patent overseas. In the UK, the official filing, search and examination fees required by the UK Intellectual Property Office (UKIPO) together amount to around a modest £200 GBP or so. However, in overseas jurisdictions, particularly in Europe, the fees alone can be thousands of pounds.
Therefore, it does not make commercial sense to file a foreign patent application unless you have done as much as possible to ensure that your patent is likely to be granted.
Before even filing a UK patent application, initial background research to try and ensure that any easily obtainable prior disclosure (‘prior art’) is taken into consideration should be undertaken. A freely available patents database, such as Espacenet, can be easily and safely keyword searched.
On filing your UK patent application, it is highly advisable to pay the application fee and the search fee. This puts in motion the first step of the patenting process at the UKIPO, and the Examiner will undertake his official worldwide patent search.
Although the application fee and the search fee do not have to be paid on filing, the search takes between 3 and 6 months to be returned. If you do not have the results when you are considering filing overseas patents at or near the first anniversary of your British patent application, you could be gambling far more than necessary that your invention is actually new.
As such, it is recommended to pay the application fee and the search fee at the time of the filing the UK patent application.
With the search results to hand before the one year deadline for filing foreign patent applications, you will then have reasonable confidence as to whether overseas patent protection should be sought.
If the search report is negative, then you may decide not to pursue patent protection in foreign markets. However, your patent attorney at Albright Patents can review the results of the search and advise on the likelihood of success.
Generally, it is only advisable to seek overseas patent protection if there is a reasonable chance of your patent being granted. In light of the search report from the UKIPO, which is a good quality worldwide patent search, this decision should become easier and thus allow you to make a better informed commercial and financial decision.
Of course, your decision to file an overseas patent application may very well be commercially based, and thus having as much information and advice as possible to make an informed decision can only make sense.