AboutPenny Ballou Expertise The Invention Process; Royalties; Licensing Inventions/Products; Pricing; Direct to Market; Marketing/Promotions; Patent Searching; DIY patent writing; Types of patents/costs/how to's; Funding (grants and Angel investors); Prototyping; Off-Shore sourcing.
Experience I am founder of an inventors group; Advisory Board President of www.inventored.org; former Licensing Executive Society member; researcher for www.piausa.org and a consultant; plus moderate and contribute to several online inventor discussion groups.
Publications Enter my email address into any search engine to find them.
Education/Credentials Invention development: well-studied and applied in all aspects of the process and an inventor myself with one invention in patent pending and others ramping up. Lived and attended schools in Mainland China and the UK.
Thanks in advance for your time. I am living in the middle east and have a product I have designed and made a prototype for which I want to test on the market here by way of a small batch run which I will fund myself. As I believe the product has potential in both Europe and the US I would like to protect it before it 'goes public'. My questions are:
1: I have kept a diary and drawings etc of the development of my product. What more do I need to do to protect it at this point? I believe in my product but if I can test the market and then push it to larger manufacturers with a proven success story without going through full patent application at this point that would be better.
2: Is it better for me to apply for an international patent which I believe gives me 30 months delay in entering the various national patent schemes, or to apply to each country?
3: If I do not protect it here does that effect other patent pendings in other countries or is it best to protect it here also?
Thanks again, look forward to your reply.
Pete
Answer Hello there Pete,
You've asked the following numbered questions:
1: I have kept a diary and drawings etc of the development of my product. What more do I need to do to protect it at this point?
a) If you’re planning on “testing it in the marketplace” carte blanche as opposed to conducting private tests such as a focus group where everyone signs a Non Disclosure Agreement, and, since you have no protection know that in some countries of the world after a public disclosure made you’d be out of gas if you filed a patent application as these are considered “absolute novelty” countries; meaning, the first legal action you take before disclosing it is to file a patent application.
b) In the U.S. you are given a year to file after it’s been publicly disclosed. At this point, the minimum you could do is to file an application in the U.S. such as a Provisional which would allow you to use the term “patent pending” for a year.
c) What is your nationality and country of origin?
2. I believe in my product but if I can test the market and then push it to larger manufacturers with a proven success story without going through full patent application at this point that would be better.
a) A provisional is not a full patent application so it might meet your criteria and for a modest sum that is, depending if the U.S. would be a country it is marketable in. Formal patents, filing of are business decisions whereas filing a Provisional buys one the right to use the term “patent pending” for a limited term, has a low cost, and unless one tells someone all one filed was a Provisional (a placeholder) no one would be the wiser.
3. Is it better for me to apply for an international patent which I believe gives me 30 months delay in entering the various national patent schemes, or to apply to each country?
a) Technically there’s no such patent as an international patent. You’re talking filing a formal (not a Provisional) possibly under the Patent Cooperation Treaty buying time to elect what countries one might want to eventually file in (usually based on the market potential for the product).
4. If I do not protect it here does that effect other patent pendings in other countries or is it best to protect it here also?
a) Protection is a business decision. If it makes no business sense to file in the UAE (your target buyers not being there en masse) you would probably skip it. However, that is a question for a patent attorney in Dubai. As I recall UAE became a party to the PCT in 1999 or thereabouts so were you to decide to file a formal (Non Provisional) look into filing under the PCT buying time to elect what countries you might later want to file in.
b) One more point, like most countries they have restrictions on filing in another country first without having permission from one’s government.
My suggestion is to find a patent attorney in Dubai willing to give you a free short consultation to get all your legal issues answered.
