Bit random but some great minds and experience on here that can hopefully help me out.
Myself and friend have an idea that does not look like it is currently out there, he works in the field where the idea would be used extensively and he has never seen anything like it being used, without going into the idea itself it is something that could be mandatory (possibly regulatory) for that sector of work.
We have had a play with a few prototypes with varying results and are quite (very) far off a production ready product, the idea and concept are there along with some photoshop drawings - but where do we go from here?
I thought about patents but it looks too soon for that route of protection bearing in mind we dont have a working prototype, another route is approaching a company that makes similar products for other sectors with an NDA (Non Disclosure Agreement), this route is my preferred option as if its as good as we think it is a company could really get this moving with their current knowledge and production facilities.
So, does anyone have any experience with producing a product and going to patent or working with a company with NDA's in place?
You don’t need a working prototype to get a patent. In fact I’d encourage you to try to patent any unique aspects of the idea first, as you will leave yourself exposed to your intellectual property being stolen when using third parties to machine the prototype. Sounds exciting though. Good luck
I’ve spent a good few years patenting inventions so I know a few things, not everything, but this is what I do know.
You don’t need a prototype to apply for a patent, just a good description of what it is and how it works in the preferred implementation. You need to figure out what specific thing about your invention is novel and search the existing patent literature to see if anything like it has ever been done before.
You will need to employ a patent attorney to write the application and deal with the inevitable refusals. Patents have very specific formats and the required wording isn’t obvious to the untrained. Failing to comply with these conventions will get your application denied every time. This will cost lots. You will need to do this separately for every country you wish to cover. This will cost many lots.
Once you have your patent, you will need a patent attorney to defend it when some unscrupulous individuals step over your line in the sand. Conventional wisdom seems to be is if you haven’t got at least half a mil set aside for legal fees, you might as well not bother.
If you haven’t got that much cash floating around, your patent only has some value if you can sell it to someone who has, provided they are honest enough to not take the option of simply stealing your invention and patenting a derivative of their own.
In all my years dealing with patent infringements, I’ve never seen a case won.
Last edited by Groundrush; 10th September 2021 at 12:42.
As above, patent it but needs to be done properly.
Originally Posted by Groundrush
This.
In my first career we invented a fairly substantial piece of new online technology - these were the very early days of the internet.
Patenting it was very difficult indeed, expensive and (although we had substantial investment and corporate muscle behind us) nigh on impossible to cover the entire world.
Within months, we were subjected to corporate espionage - a competitor paid a junior employee to pass them technical details and code - we caught them, but other than firing them there wasn't a great deal we could do without massive legal action to the high court - which we started.
The competitor eventually caved, but not before huge sums of money and time had been wasted.
The problem is that a competitor only needs to make a few changes and it can be deemed an entirely different product - look at Dyson - invented the cyclone vacuum, but now every manufacturer makes them.
I think the best advice is not to worry too much, but try to get to market quickly and become the established brand. Others will copy, but if you are the "hoover" in this scenario you stand a chance of making money. However, you will need a biggish company behind you these days, as any new product is the result of a significant team product - the days of lone inventors in a shed passed twenty years or more ago.
The other sobering fact is that often the pioneers don't end up being the biggest players, others take the idea and improve it.
That said, you'll never know if you don't try. Maybe identify some companies in the field that might be open to having a conversation, but be wary of even attempting to get them to sign NDA's as often their lawyers will advise them against it, and they are barely worth the paper they are written on anyhow.
Dunno if any of that helps!?
So clever my foot fell off.
Thanks for the replies so far..
Groundrush - that looks quite daunting and almost a free for all if you have never seen a patent infringement case won, I heard patents can be expensive, especially if applying to other countries, its this hassle that is tempting me into getting a company on board that already deals in similar products but in a different sector, obviously I would need an iron clad NDA, I imagine they should know about patenting from other designs they have, obviously they would take a big cut but could alleviate a lot of the hassle and get the product to market much quicker.
While it is tempting to talk with a company I dont want to sell out so to speak, hmmm where to go from here?
Wow, intriguing. Sounds a bit like Stac vs. Microsoft, but that wasn't exactly online technology.
Agree with Rusty on the patent, I would not rely on an NDA at all. Patents need not be expensive or complicated, it all depends on the idea and the patent lawyer you employ. I can pass on the details of an excellent no BS patent lawyer that has been great for our business if you are interested.You don’t need a working prototype to get a patent. In fact I’d encourage you to try to patent any unique aspects of the idea first, as you will leave yourself exposed to your intellectual property being stolen when using third parties to machine the prototype. Sounds exciting though. Good luck
Most NDA’s only stop the company from telling anyone else about the content. I’m not totally sure but I guess you would probably need some other legal document to stop them from stealing your invention, a patent probably.
If there is some aspect of your invention that can be kept as a trade secret, this is a much better option as it is hard for someone else to figure out and free for you to exploit. Another option may be to trademark some crucial aspect of the design. That should be much cheaper to implement but probably just as expensive to defend. Failing that, unless you can find a trustworthy partner with the necessary firepower, you may be better off to go into production and take the inevitable copies as an occupational hazard. Original and best etc.
Like most law, the patent system only really protects the guy with the deepest pockets.
Yes many find the trade secret route a much better (and cheaper) alternative. But of course that depends on the nature of the invention as Groundrush says. I know a couple of biotech start-ups (developing formulation components) who aren’t bothering with patents currently - let’s face it, a patent simply publishes the ins and outs of your invention and, if there’s money to be made, these WILL be copied abroad and you’ll have zero hope of protecting.
Good luck though OP… sounds interesting!
Helps a lot, thank you.
I suppose that is the crux of it - who has the deepest pockets and it isnt me unfortunately!
Another problem is the aspect of keeping something in the design a trade secret, its very simple and has no moving parts so can easily be fathomed out or improved by greater minds.
My friend mentioned it to the director of a big company he works for which may either be a help or hinderance, apparently he was amazed by the idea and said it would help win them big contracts if we could put it into production, he also said another company he knows of which is far far bigger would probably want to get on board with it too..
Its bit of a cross roads of where to go from here?
Once an invention is deemed to be in the public domain it is no longer patentable. If you tell someone you’re essentially putting your invention in their hands and they could easily ruin things for you in patent terms. Conventional wisdom is tell no one who isn’t your lawyer or you haven’t signed an nda with. But if this guy can help, maybe it’s worth it?
Yes I read that too unfortunately, I get he was trying to gage the audience so to speak but it does compromise the product, I gather he is super busy and would rather someone else deal with a product like this rather than take it on himself but you never know.
All these patent and NDA issues plus third parties knowing about it is what makes me less protective of it, hence putting it front of a company that you can hopefully build a relationship with and take a slice of the profits is a tempting option..
Thank you, I'll have a chat with my friend about this and if we go the patent route I'll drop you a PM ..
What you could do is file a patent application anyway, knowing that it takes a couple of years to get through to the examination stage. That might give you enough protection in the meantime to sell the idea even if the patent never gets granted. Maybe, not advice blah blah blah
I looked at Patent applications and how to pay on the .GOV site, quite surprising how cheap it is, I take it once the application is in then its filed?
Fees
Stage Apply online
Application (if you pay when you apply) - £60
Search £150 (plus £20 for each claim over 25 claims)
Substantive examination £100 (plus £10 for each page of description over 35 pages)
There feels like there will be a lot of trust and gentlemen's agreements needed to approach a company and sell the idea which could be very risky, the thought of seeing your idea/design being used extensively and not receiving a penny would severely piss me off!
As others have said, no harm in starting the patent process, but don't asusme it would give you any significant protection that is useful early on, or even later. It does show you are serious though I guess.
I would be inclined to talk to that Director and the company he mentions - the fact that he has been told about it already means any intellectual copyright is already potentially compromised.
I was once told, "if you are having a good idea, there is a good chance that someone else is having the same idea right now too." I don't know if that could apply to you, but the message was - don't hang about. If you can get it into production and to market, then 10% of something is better than 100% of nothing.
It sounds from what you are saying that your invention would be easy for a competitor to modify and put into production - claiming it to be a different product.
If it were me, and I really and truly believed in it, I would try and get moving fast. At some point you are probably going to have to trust some people, and that is probably unavoidable I'm afraid.
So clever my foot fell off.
I work in IP (though not as an attorney).
Echoing what others have said to some degree, If you’re planning to patent it:
As others have said, it needs to be “novel” - a search of existing patent literature will indicate this Depending on the technology you could organise a search company to do this for you, but if it’s very niche technology to understand it may be worth having a look yourself on espacenet (a free to use searchable patent database). The patent office will do a search themselves when examining your application, but it may pay to know what’s out there now rather than waiting an age (and putting more money in)
This will not only tell you whether your specific idea is new, but may also show you other solutions to the problem which your invention solves.
It sounds obvious, but patents do not stop people developing technology which does not infringe (fall within the coverage) of them. E.g. if I invent and patent a robotic arm with a pen on the end, it does not stop anyone else making a robot arm with a pencil on the end, and they could then copy my design but use a pencil instead and steal the market for my product. If however my patented invention was a robot arm with a “writing or drawing implement” on the end then this would stop people doing stuff with crayons, chalk etc as well as pens or pencils. I can only get the the broader patent on this however if no one else has thought of putting any of these things on the end of a robot arm first.
When you’ve seen what else is out there in the public domain (eg published patents) which is similar to your idea you can make in informed decision over whether the invention you can patent protect has enough advantage over whatever else is known to justify the cost of patenting it.
I also would strongly recommend getting a patent attorney to do your patent application (should you decide to do this). As others suggest, it’s more complicated than it might look.
Firstly congratulations…. And well done on having a potentially novel idea!
I’m an inventor (in so much as I have numerous patent pending and patent granted under my name)…. I’ve been involved in writing a lot of them…. There is a certain knack to it.
Most of the good advice has been offered
You need to complete a novelty search first…. Research any related patent to ensure your potential patent isn’t infringing anything already out there…. Don’t worry if you find something close…. As long you have something that is novel about your idea you can still patent it…. Freedom to practice (make your invention and take it to market is key)
A good patent attorney is key and really take your time on your independent claims…. Aim to make them as broad as you can but tight enough so they’re tricky to copy
Don’t overly rely on NDA…. And be very careful about how you share thing (really careful)…. Only share if you really need to
Make sure you can get to market quick before your patent is out there…. A patent can be perceived as an idea to copy…. A few simple tweaks and boom someone’s competing with you and you can’t touch them
My patent attorney describes patent creation as nuclear armament for big manufacturers…. They all have an arsenal of patents pointing at one and other so nobody wants to go to war as it can get very very messy!
Good luck…!
Thank you all for the detailed posts..
The quote by TheFlyingBanana - If you can get it into production and to market, then 10% of something is better than 100% of nothing. is quite true.
I think its very easy to see such projects as your baby and spend far too much time and money dealing with the protection of the project rather than getting it out to market, yes we need to do our homework on patents but at some point we have to trust a production company to make it a reality.
ej86 - some great advice there for me to research, our type of product is used in hundreds if not thousands of different sectors but not this sector we are targeting (well not that we have seen), not sure if this will make patent application easier or much more difficult?
Wolfie - You sound like you have a lot of experience, one option I'am considering is approaching some companies that already make similar products, they're previous experience, manufacturing capabilities and getting such products to market would propel this project quickly
If we went this route then of course we would be revealing all so dangerous ground, how to move forward with them is another question -
- Is it best to sell the idea outright?
- Agree a deal where they take all the load and take percentage from sales?
- Or the long road, patent and protect the idea but use their production while we deal with all the sales
The last one is not really realistic for us, I imagine tooling would need to be made up, minimum order quantities etc so lots of money and risk.
I like the idea the second option, it would give a company a responsibility to protect the product, take the production hassle off us while we make a percentage which I imagine would be small.
The first option is a no unless the money being offered was life changing and then you have to ask yourself why are they offering so much to buy you out which takes us back to option 2..
Lots to think about but thanks for the advice so far..
Last edited by murkeywaters; 11th September 2021 at 11:01.
Tooling up and cutting a deal with MOQ’s can be a heavy investment…. But, not impossible!
You can get cheaper tools made - head east. Cheaper tools = fewer shots so could be an interim solution to get you started and it all depends on the complexity of what your tooling…. A good design should always take account of how easy something is to assemble - labour can be one of the biggest costs in manufacturing…. And best of luck if you have an in demand chip - it’s a zoo out there at the moment with people spending huge amounts on the spot market to secure supplies…
I work quite closely with an industrial design company - DCA based in Warwick…. They’re not cheap but can get you’re design made real and support building your bill of material at a good cost and have a load of contacts…
Penetrating big companies and getting in front of decision makers can be a huge challenge…. If you have contacts, then leverage them and take advice on how you manage the proposal and non disclosure
% deals are generally very small, but, if you’ve got 0.X% of gazillions it can work out…. Safest option is for them to buy your design and patent, but, that’s a one time deal…. Maybe a hybrid deal could be negotiated…?. Again take advice and I’m not massively knowledgeable about how these things work
If you can get yourself to ‘start up’ stage then you could tout yourselves as a target for M&A and that’s where the real money might be…. Your books will have to be immaculate for any large organisation to complete - most M&A’s fail
You’d probably want an attorney to give a more concrete answer for your specific case, but likely simpler to patent if it is in some way different/adapted for the sector you’re targeting.
If your product is really similar to products in other sectors you might want to consider freedom to operate (something Wolfie mentions- whether your product might infringe someone else’s patent(s)).
Might be doing this anyway but make sure you’re keeping records/notes of your ideas.
Should be signed, dated and ideally witnessed too.
CIPA, the professional body of patent attorneys, do free IP clinics where you can find out about the patenting process and get impartial advice. I'm not sure how things are working in Covid times, but I used to do one every couple of months in my local city. Might be worth emailing CIPA to ask if they are doing virtual clinics?
For simple mechanical items patenting isn't necessarily too expensive in the UK, albeit the costs stack up quickly if you want to protect internationally, not to mention enforcement... If there is a market big enough to encourage copying of your product it (patent protection) can be priceless. I'd encourage you to do some googling to try and find something similar using generic terms. As noted above, don't tell anyone without conditions of confidentiality, once the cat is out of the bag the patenting option disappears for the UK at least.
Re prototypes, you have 1 year to "improve" your disclosure to best describe how the invention can be reduced to practice before filing the final application. The value the patent attorney should bring to the table is to express the fundamental essence of how your invention works into words to give a chance to protect broadly as well as the expert knowledge of patenting and using IP as a tool in business. You'll need to balance whether the cost merits the investment, but if you want or need investment to move forward an IP strategy is usually essential.
Good luck!
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