Saving a Patent Application

Jane LambertJane Lambert

12 June 2010

A small but well established family company had invented some packaging machinery and had instructed a local firm of patent attorneys to apply for a patent. The patent attorneys did several thousand pounds of work but the company encountered financial difficulties before the application could be published and had to be wound up. The agents were unpaid and the application lapsed.

An entrepreneur wishing to set up a business in the same industry employed the inventor of the previous invention. He had invented a refinement to his original invention and had bought from the liquidator the intellectual property of the insolvent company.

The inventor and his new boss came to see me to find out whether the improvement was patentable. The new invention appeared to be less valuable than the previous invention but it occurred to me that the application for that invention might be saved. As I happened to know the patent attorney who had acted for the old company, I asked my client and the inventor whether I could call him to see what had been done before the applicant company had been wound up and whether its application could be salvaged. My client and the inventor thought that was a very good idea so, with their permission, I made the phone call.

It turned out that the application could be saved and that the patent attorney could pick up the pieces for the old application and proceed with the new one for a considerable saving in fees. I put that proposal to my client and he agreed to meet the patent attorney with his employee, the inventor. The patent attorney met my client and inventor just before they were due to meet me to discuss another matter and they were able to come to deal that was beneficial to all of them.

The last I heard was that applications were proceeding for both inventions and that the new company was doing well.