Patent a light bulb moment
Q) My start-up company has come up with an idea to produce light boxes based on
thermal technology. We're operating on a shoestring at the moment but think this
new invention could be big. I've done some searching and see that there is a
"patent pending" on a similar but subtly different invention to mine. Should I be
concerned about pressing ahead with my invention?
Yes. The term 'patent pending' is supposed to indicate that a patent has been applied
for. If a patent is granted then you might be stopped from exploiting your invention and
possibly forced to pay damages if such exploitations are deemed to fall within the scope of
protection conferred by the patent. Not all 'patent pending' applications are granted and so
you should find out whether a patent application is actually pending, or could become
pending, in a country that your invention may be made in, imported to, sold or used in.
If a patent application is pending, you should determine whether any activities associated
with your idea are likely to fall within the scope of protection that might be granted from the
application. If there is a problem then you might consider contacting the applicant to see if
you can come to an agreement that would allow you to exploit your idea. You should
ideally consult a patent attorney on these matters.
If your invention is inventive then you should consider filing patent applications of your
own. This may enable you to prevent others from making your invention without a
licence. Not only would this enable you to raise funding, but if the 'patent pending' was
determined to be problematic then having your own applications may provide leverage for
cross-licensing with the pending patent. Also, 'green' technology can be big business at
the moment and there might be suitable investors or grants to help you with your budget.
Andrew Chiva, Associate
First published in the Financial Times, August 2011
Copyright 2010. The information in this document is necessarily of a general nature and is given by way of guidance only. Specific legal advice
should be sought on any particular matter. Dehns accepts no responsibility whatsoever for any action taken or not taken on the basis of the
information contained herein. (Last updated August 2011 - APC)