Should You apply for a Patent for Your Invention

27 Dec 2005

This should be one of the first questions that anyone with an interest in an invention should ask. Unfortunately, a lot of money is wasted because that question is never asked. Consequently, many small companies and private inventors pay thousands of pounds for legal protection that they don't need, never use and in some cases can't afford. That is because they don't really understand what a patent is or how to use it and nobody tells them just how much a patent is likely to cost.

What is a Patent?

A patent is the exclusive right to prevent third partes not having the consent of the person to whom the patent was granted ("the patentee") from:

	making, using, offering for sale, selling, or importing the invention for which the patent was granted where that invention is a product; or
	using the invention (if the invention is a process), and from using, offering for sale, selling, or importing any product obtained directly by the patented process.

within the boundaries of the state or territory for which the patent was granted for up to 20 years from the date upon which it was requested.

What this means in Practice

This is essentially a right to bring an action in the civil courts against anybody who encroaches upon (lawyers say "infringes") any of the exclusive rights mentioned above within the territory of the government that granted the patent. It is important to note from the start that infringement is not a criminal offence (though it may one day become one). The rights granted by a patent are enforceable only through civil proceedings in the courts of the country where the patent was infringed.

How Patents are used

Patents are intended to give patentees an opportunity to establish themselves in a market and to recoup research, development and marketing costs before facing competition. If nobody wants to do any of the things that are reserved to the patentee, there is no obvious point in having a patent. Similarly, there is no obvious point of having a patent if the costs and risks of obtaining and enforcing a patent are likely to exceed the value of the benefit of limiting competition.

How much is a Patent Likely to cost?

There are at least two sets of costs:

	those of obtaining and maintaining the patent; and
	those of enforcing it.

Both sets of costs vary greatly from patent to patent and from country to country.

Costs of Obtaining a Patent

On 21 Dec 2005 the European Patent Office published a survey of some 253 of patentees from Europe, the USA and Japan to find out the costs of getting and keeping a European patent. The researchers found that the average cost of obtaining a typical 14-page patent (11 pages of description and 3 pages of claims) with 10 claims designated for 6 countries was €30,530. EPO fees account for only a fraction of that expense. The rest are made up of pre-filing expenditure, internal costs, professional fees, translations and national validation fees.

Enforcement

As a general rule, the cost of enforcement is very much higher in countries with an adversarial system of litigation such as the UK, the USA, Australia, Canada, Hong Kong, India, Ireland and New Zealand than it is in an inquisitorial system such as France, Germany, Switzerland or the Netherlands. According to IPAC (the government's own high level advisory committee on intellectual property) the costs of a simple litigation:

	England and Wales €1.4 million High Court and €220,000 Patents County Court
	France €30,000 - 50,000
	Germany €25,000 - 50,000
	The Netherlands €10,000 - 40,000
	USA €1.7 - 3.4 million.

The high cost of patent enforcement for small and medium size enterprises and individual inventors in USA is mitigated to some extent by the availability of lawyers who are prepared to undertake patent litigation on the promise of a share of any damages that may be awarded to their clients ("contingency fees") and by the fact that it s rare for an unsuccessful claimant to be ordered to pay the other side's costs. Until April 2000 individual inventors could sometimes qualify for legal aid but that entitlement was abolished by paragraph 1 (h) of Schedule 2 to the Labour government's Access to Justice Act 1999. The only way in which enforcement litigation can now be funded in England is through insurance or the litigant's own resources.

Conclusion

The answer to the question whether an inventor or other person with an interest in an invention should apply for a patent will depend on the answers to the following questions:

	Is it likely that this invention will ever be made or used?
	If the invention is likely to be made or used, how much is it worth to prevent others from making or using it for up to 20 years?
	Can the owner or other person with an interest in the invention afford to enforce the patent?