1. THE INITIAL APPLICATION
When to file a Patent Application is a decision that cannot be taken lightly and will depend upon many factors, for example, if a product or process is to be disclosed to the public then the Application should be placed on file at the UK-IPO, i.e. the Patent Office, or any other Patent Office in the jurisdiction of choice before any disclosure to the public.
The decision to file an Application may be necessary to keep ahead of the game in areas where competitors are also likely to be developing a similar product of process. In such cases your hand may be forced while the product or process is still in a development stage and further research is required in order to ensure that the product or process is finely tuned to meet the market needs.
2. MULTIPLE PATENT APPLICATIONS
Having filed a first Patent Application and, thereafter, coming up with an essential component, or step, for an improved product and/or process respectively, it is not uncommon for a second or more Patent Applications to be filed within the first 12 months after the filing of the first Application.
In such cases, as long as the later development(s) falls within the scope of the invention that has been defined in the first Application, the disclosures of any subsequent
Applications may be co-joined within the Specific Description of the basic Patent Application.
This protocol applies as long as the cognate Application is filed within 12 months of the priority date of the first filed Application.
3. IS THERE A DOWNSIDE TO MULTIPLE PRIORITIES?
If a continuing Patent Application is based on two or more priority Applications, there is usually no downside unless there is a clash of interests with a Patentee, who’s Patent(s) has dates that overlap with those of your Application.
In such instances, the later priority dates that attach to the features of your subsequent developments may impact upon the questions of infringement, or otherwise, of one or more of the Claims that relate to an invention that has a later date than the priority date of the basic Application.
For evidence of multiple priorities in Patents on file, click here.
This Patent is based on 5 Applications that were filed within the twelve months following the basic Application.
*John Grant is Senior Patent Attorney at Trevor Baylis Brands (TBB) plc. TBB has provided advice to thousands of individuals and companies on the best way to develop their business and protect their intellectual property. Building Enterprise (BE) Ltd is a new development from TBB offering a one-stop shop for innovation development, helping to take initial ideas through to a successful commercial outcome.*
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