Jack Braithwaite and Rachel Mercer, Appleyard Lees
Securing patent protection is a crucial step in successfully commercialising your medical device. But when should you start to think about your intellectual property (IP), when should you file your first patent application, and what does the process normally look like?
In short, you should continuously consider your IP position from the outset. This includes thoroughly recording research and any innovative concepts. Steps should also be taken to keep potential inventions confidential, as publicly disclosed inventions are generally no longer eligible for patent protection in most jurisdictions.
When considering filing a patent application you should think about:
- Your financial position and funding (as there are costs associated with obtaining patent protection);
- Whether you have enough data/a working prototype to support your application;
- Whether a similar invention or disclosure from a third party is likely to arise in the near future; and
- Whether you are looking to disclose the invention publicly.
You should consider speaking to a patent attorney at an early stage to obtain advice regarding the timings of filing an application as the best time will vary on a case-by-case basis.
Ready to File?
Patents are jurisdictional, meaning that businesses must apply for protection in every country for which they want protection. Entry into a new jurisdiction is associated with additional costs. Therefore, you should carefully consider which countries match your commercial goals.
The usual first step is to file an application in the UK. Once filed, you have ‘planted your flag in the sand’ and you can then disclose your invention without affecting whether the patent application proceeds to grant.
To advance your application into multiple jurisdictions, you can file subsequent applications directly with foreign patent offices, or file an International Application (otherwise known as a PCT application). A PCT application acts as a placeholder and gives the Applicant 30 months to decide which of 157 contracting states they wish to go ahead and obtain protection in. This approach gives the Applicant time to consider
which jurisdictions are of commercial importance and defers the costs, thereby giving the Applicant more time to secure funding.
These subsequent applications should be filed within 12 months of the initial UK application such that the applications benefit from the filing date of the original application. It is common for an Applicant to wait until they have received a report from the UK Patent Office detailing any related documents (known as prior art) before deciding whether to invest in further applications.
In each jurisdiction an Examiner will review your application and amendments to the application will often be required before grant. It will therefore take several years to receive a granted patent. Once granted, you will enjoy a monopoly over your invention for up to 20 years, provided you regularly pay renewal fees. Your patent will act as a deterrent for competitors looking to utilise your invention, but you will need to enforce your patent proactively by looking out for any unpermitted exploitation.
If you have any questions or we can be of any assistance please don’t hesitate to contact Rachel Mercer at Appleyard Lees IP LLP.