Cash-crunch ' How To Delay Patent Costs?

• Published date: 29 March 2023
• Subject Matter: Intellectual Property, Patent
• Law Firm: Marks & Clerk
• Author: Mr Mike Williams and James Kendrick

News headlines recently have been full of the financial struggles at Silicon Valley Bank, at both the main US bank and the UK arm, and now the issues facing Credit Suisse. As discussed in this article, SVB specializes in providing financial services for the specific needs of tech start-ups and thus these difficulties have particularly affected tech start-ups. Fortunately for all involved, a resolution has been found for both SVB and Credit Suisse. Nonetheless, the SVB struggles in particular did cause many companies to consider what options are available for delaying costs during the patent prosecution process. Depending on the patent office in question, there are usually a number of options to push back costs.

At the outset, a specific filing strategy can be used to defer costs. For example, by making a first filing in a relatively inexpensive country, like the UK, decisions on where else to file can be delayed for up to a year. Patent Cooperation Treaty (PCT) applications can also be used to further extend the cost runway by a further 18 months.

Once filed, various extensions are usually available to the applicant to delay when costs need to be incurred. For example, while objections from an Examiner normally need a reply within a set period, extensions can often be used to delay this (and the associated costs). Care...