Patent truth

To avoid losing patent rights to their developments, engineers should work closely with advisers throughout the research process, says Karl Barnfather

Patent advisers can help innovation-led businesses work more efficiently and deliver better commercial value but, often, they are called in too late.

Frequently they receive requests out of the blue to file a patent as soon as possible. For example, a member of the sales team visits the research and development department to find out what is going on. While chatting to an engineer he discovers that work is under way to develop an improved product with some highly marketable new features. The next day, when meeting one of his key customers, he cannot resist telling them about this exciting new development and in doing so, he unintentionally discloses the entire research proposition. As a result, it may no longer be possible to obtain patent protection for it.

Similarly, valuable research can be disclosed unwittingly at exhibitions and trade fairs or in conference papers prepared by academics and circulated to delegates at the event.

In such circumstances, the patent adviser is bound to say it may be too late to gain protection. The research work is already in the public domain and the clock cannot be turned back. Even if the Intellectual Property Office (UKIPO) is unaware of the disclosure and protection is granted, a single challenge could be sufficient to invalidate the patent.

The most successful patent partnerships operate a carefully managed invention process from the outset.

Even at this early stage, the patent adviser’s role is important. In particular, they can let the engineer know when an invention is worth protecting. It is not unusual for engineers to overlook the significance or commercial potential of their inventions and an adviser can help them make this early-stage assessment.

Maintaining a dialogue with the adviser can also be helpful in other ways. The engineer can gain access to information about other, related patent applications. This information can be used to direct future research and development activity to areas that are likely to be most commercially viable.

In some fast-developing technological fields the adviser can provide valuable information on new ‘standards’ and help to ensure that innovations under development are compatible with the dominant user technologies.

Most companies involved in research and development activity are aware that effective patent protection relies upon the timely disclosure of inventions. When going public, a company must also decide what is the best way to exploit its invention.

The invention can be sold to generate a return on the research and development activity or it can be licensed to a third party and backed by a licensing agreement. Alternatively, it can be made, then licensed to the third party — an option that often requires the greatest investment in exchange for higher commercial rewards. Many companies choose to use the patent to manufacture and sell the product themselves.

The point at which the business realises the value of its investment is the most important stage for the patent partnership.

It is not unusual for some companies to prefer to keep the patent adviser at arm’s length from the engineer, to avoid any potential disruption of research activity. For established companies, with well-managed invention systems, this approach can work well and helps to ensure that interactions with the patent advisory team are kept to a minimum.

However, there are inherent risks in taking this approach and for most innovation-led businesses, operating in fast-moving technological fields, a closer and more regular dialogue is usually beneficial.

Ultimately, the most successful patent partnerships are those in which the engineer and the patent adviser share a passion for invention and knowledge of the specific area of technological research. By working closely together, they can manage and harness the value of inventions, and achieve their full commercial value.

Karl Barnfather is a patent attorney at Withers & Rogers LLP