Getting your IP strategy right from the start
12th November 2021

Particularly in the case of early stage companies, it is tempting to seek to minimise costs by beginning the patenting process with a UK patent application.  The official fees associated with UK applications are relatively low, and search and examination reports are issued promptly.  Such filings are often followed up with International (PCT) applications as a relatively low cost way of keeping open the options for later overseas national and regional patent applications.

Whilst this can be a good way to minimise costs in the short term whilst keeping ones options open, it does not necessarily optimise your IP spend over the medium and long term, and is unlikely to result in granted rights being obtained within the timescale that investment might be sought (other than perhaps a UK patent).  Serious investors will almost certainly place much greater value on granted rights than pending applications, and will also place different values on patents in different jurisdictions.  For example, it is not uncommon for investors to place great importance on granted US patents especially of course when those investors are based in the US.  If a company has the luxury to take a two or three year view of their IP budget, serious consideration should be given to adopting a strategy that will result in early granted rights in those jurisdictions that will present the greatest investment value.

It should be kept in mind that a first filing in the US, China, or any other Paris Convention country will give rise to the same priority right as a first filing in the UK, i.e. the first filing can be used as a basis for further filings within 12 months without the risk of those further filings being invalidated by an intervening disclosure.  So there is nothing to stop an applicant filing first in the US and, for example, filing a PCT application within 12 months.  Whilst the upfront cost will be somewhat greater, the early US filing will mean that grant in the US can be accelerated.  Indeed, by paying an additional fee for expedited grant in the US, grant can even occur within a year.

Of course, for a given IP spend, one might seriously consider whether the cost of a PCT filing, or filings in a basket of countries seen as commercially important in the long term, is justified, or if that money is better spent on seeking protection for a second invention in a country seen as valuable from an investment point of view; perhaps the most value can be obtained by seeking 2 or 3 granted patents in the US versus a bundle of patents and patent applications for a single invention spanning several less interesting countries.

A well thought out strategy at the outset is invaluable, whichever route one decides to take.  This strategy should be determined based on the ultimate objectives and the stages in reaching those objectives.  There might be little point in obtaining wide-ranging geographic protection in 5 years’ time, if a bundle of pending applications will not allow you to raise investment after 3 years to keep the company on track.  The converse might be true of course, as might a blended approach, but either way the options need to be considered.

About the author

Marks & Clerk LLP
He has extensive experience across a large number of technical areas. In his early career he worked in-house for Nokia Mobile Phones working on 3G and 4G mobile telephone systems. He continued in this field for other clients, moving onto 5G systems and other wireless and Internet-based communication systems. Other related areas of interest include computer security and very high speed manufacturing. More recently, Robert has worked on technologies more closely related to his academic background, and has advised a number of exciting start-up projects in the areas of bioelectronics and DNA analysis, both medical and consumer focussed.

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