Recently, one of IP Draughts’ clients wrote to him, seeking advice. The client is a scientist who has retired from full-time employment, and has made an invention. He was trying to decide whether to continue with some patent applications, which had reached the stage where some real money needed to be spent, if the applications were to continue.
There is no employer involved, so the invention belongs to the scientist. IP Draughts has no knowledge of the client’s financial position, but assumes that he does not have unlimited wealth.
The subsequent exchange of correspondence seemed to be of general application, so with the client’s permission IP Draughts has reproduced it below. Only the names and other identifiers have been changed.
Dear IP Draughts,
They say: I am between a rock and a hard place
As you know, I have tried with MegaCorp (“still thinking”) and later MaxiCo (using ~ the same NDA – and they are also “still thinking”). I have a deadline of [ ] to decide about which countries to pay for the patent:
European Patent Office £4100
New Zealand £2200
I will try another (MultiComp) but if they also “just think about it” I will have no income. If I just paid for USA and EPO and at some future date I finally get some company to agree royalties, would I then be able to pay the other countries, or is it “too late” ? Obviously this is a large investment of my own money with no guarantees.
One other possibility might be to just go for the USA patent and hope that they could sell through “subsidiaries” (e.g. [ ]).
I know it is hard times out there, but [ ] always said you are both an excellent lawyer as well as businessman, so I wonder if you could give me your own overview since you have undoubtedly seen this conundrum before….
All best wishes,
Sorry to hear about the lack of progress with these companies.
This a not-uncommon problem. You are reaching the point where the hard cash reality of rising patenting costs and a lack of definite commitment from potential licensees brings into question the viability of your technology as a business proposition. No matter how good your idea, if you can’t get someone to buy it, it has no commercial value.
In your position, I would be reviewing how much of my retirement income/assets I can afford to gamble invest in what is becoming a rather speculative venture. I would not base this just on my faith in the [ ] benefits, I would take a hard-nosed investment decision. Do I have enough other assets, invested safely (eg in a pension scheme), that I can take a punt on this project and lose all of that investment, and do I really believe there is a good business (as distinct from scientific) case for this investment, bearing in mind the possibly luke-warm response so far?
If the answer is no, then don’t spend any more money. If the answer is yes, but you can’t afford all of these patent costs, then you might consider focussing on key territories. I don’t know enough about the technology and the market to say which those territories are, but from general principles, you might decide:
- If you can only afford £5,000, (and will be able to afford more for later stages in the filings), just file in the USA
- If you can only afford £10,000 (and will be able to afford more for later stages in the filings), just file in the USA and EPO
- If you can only afford £20,000 (and will be able to afford more for later stages), just file in the USA, EPO, Japan, Canada and Australia.
Another possible route at this stage is to talk to the technology transfer operation of Loamshire College or another university, to see whether they might be prepared to invest in the patent filings. If their answer is yes, this would provide a lower-risk, lower-return option for you.
I hope this helps you to analyse the problem and work out the best way forward.
Dear IP Draughts
As you say, I have been too focused on the scientific rather than the business side.
My most cordial thanks for your crystal clear thinking,
Do readers have any suggestions for John? There is still some time before the deadline for taking action with the patent applications.