Value For Money

Various articles recently in journals such as Inventors World have dealt with the problems of the private inventor or small company which has an innovation which clearly justifies protection if it is to be exploited but which has only a very small amount of money. Constantly the problem is that, although professional advice may be desirable, it may be too costly to be affordable for an inventor.

It must be emphasised that, in looking at any innovation in which exploitation will automatically lead to disclosure of the nature of the technology, there can only be one sure way of securing exclusivity and that is by the appropriate legal registered protection usually by way of patent or sometimes by way of registered design. Unless this is prepared by a highly skilled professional, a bungled attempt at protection may be completely defective.

The Chartered Institute of Patent Agents, which is the professional body of registered patent agents provides practitioners who through their combination of unique skills and training are undoubtedly the best persons to consult in respect of intellectual property protection. Nevertheless they do have to charge high fees because of the high qualifications, starting with a technical training and then a full legal apprenticeship with examination and qualifications usually before at least the British Patent Office and these days also usually the European Patent Office and possibly the Community Trade Mark Office and the UK Trade Mark Registry.

Iain C. Baillie

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The institute is therefore seeking ways of ensuring that newcomers to IP protection are fully informed of the available skills and techniques of protection. A commercially significant development merits expenditure on protection which often may represent a relatively minor portion of the total development cost. Nevertheless incurring the expenses of a highly skilled professional for an invention which has no commercial merit is not justified. Often one reads that an inventor spent a great deal of money on intellectual property protection which was never recouped. This is not usually the failure of the protection although some ideas do eventually turn out not to be patentable but very often because there was insufficient attention paid in the early stages to the likelihood of commercial practicality.

It is sometimes alleged that professional help in the preparing of patent applications can be obtained from sources by means less expensive than professional help. Thus suggestions have been presented that invention brokers or universities can somehow be of assistance. For instance an inter-departmental committee on Intellectual Property Review dated 1995 on the use and exploitation of IP by small firms, on the basis of a somewhat questionable survey by three American engineering students, suggested that there should be tiers of advisors including low cost patent drafting services. This is perhaps a successor to the proposals of Sir Robin Nicholson and his Green Paper in 1983 Intellectual Property Rights and Innovation which led to some of the changes in the 1988 Copyright, Designs and Patents Act and also gave rise to the thought that exploitation brokers could also "create" i.e. draft legal protection documents for example patent specifications. Although some exploitation brokers do provide very useful services and members of, for example, the International Institute of Licensing Practitioners and the Licensing Executive Society are undeniably skilled in seeking out means of exploitation, there is all the difference between a pilot of an airplane who can guide it through a successful flight and the professional who designs the airplane in the first instance i.e. the patent attorney.

The Chartered Institute of Patent Agents has been seeking out means of ensuring that patentees secure "good value for money".

Members of the Institute take part in many public presentations in how to secure patent protection in the most economical and practical manner and the very popular programme of clinics provided by the members of the Institute at various locations have almost been too successful in providing free initial consultation on possible inventions in terms of being able to meet the demand.

The first CIPA Congress in late September 1996 was specifically entitled "Value for Money" at which time there was discussion on means of reducing fees for example in the European Patent Office and minimising the need for translations with an analysis of budgets for intellectual property development on the best method to use to seek international protection in the most economical manner. There was for example a very careful analysis in relation to trade marks as to whether registration was always the best method of securing protection. The enforcement of patents with the complex question of so-called forum shopping i.e. picking the best country in Europe for economical litigation and alternatives to litigation for example use of Trading Standards Officers etc. was considered. It was interesting the see that Mr Justice Jacob one of the patent judges emphasised the necessity of being fully cost effective in litigation he has been active in promoting revision of the Court rules.

The problem with many smaller companies is that they do not appreciate that protection exists for such intangible rights and they run into two major problems:

1 They produce a new product and do not verify that it is free of the rights of others; and/or

2 They do not ensure that many exclusive features are properly protected leaving themselves open to competitors taking for nothing the investment made in development.

What should a company do to protect its investment economically? Importantly, do not rush around spending a great deal of money on patent applications etc., until you have a carefully evaluated the significance of various elements and the potential cost of either encroaching on other peoples' rights or losing the investment in development and so being uncompetitive.

The magical words therefore are inventory and exclusivity. Look at your business and see first of all what it is that distinguishes you from your competitors. Are you innovating? If so, are you ensuring that you are free of other people's rights? Is the value sufficient to merit securing patent or design protection?

Patent protection is extremely expensive and can cost literally tens of thousands of pounds, particularly if international protection is sought. A careful analysis is needed of the balance between protection and exclusivity and whether being on the market first gives an adequate return. Management of international protection involves making good use of international systems such as the European Patent and the International (PCT) System.

Alternatively look at design and the protection available through copyright (which does not require registration) instead of registered designs which, although not as expensive as patent protection, can still involve substantial costs for international registration. Design, while tending only to prevent exact copying of visual features can provide sufficient deterrent to "hold open" the market for a company to become sufficiently established.

For most companies it is important to protect those features of identity which create public awareness. These need not be names but can be unique packaging styles, colours, sounds, designs of business establishments. It can be very easy to encroach upon another company's rights, particularly in Britain where use can create a right as well as actual registration. Therefore in choosing identifying characteristics of a business, it is important to verify that they are free of other people's rights and equally it is desirable to register those rights so there is clear notification of your claim to exclusive distinction.

International systems, such as the European Community Trade mark are also available.

For applicants with very limited resources, the question does arise as to whether it may be better for an inventor to try and draft his or her own application when it is simply not possible to afford a patent attorney. While a Chartered Patent Agent will be apprehensive of encouraging inventors to undertake drafting by themselves, it is well recognised that this may be the only option except in those cases where an agent will occasionally undertake some work on a pro bono publico basis. Some applicants who have had many years experience of working with patent agents do acquire many drafting skills to allow them to make the first stab at preparing a patent application themselves. Some years ago the Consumer Association magazine "Which?" did an article on professional assistance and suggested that many inventors were "quite successful" in drafting their own patent applications. On the basis of hard experience, one must considerably doubt this assertion; what has usually happened is that the invention has been picked up fairly quickly by an interested party and at that point professional assistance was sought before there had been too drastic a disclosure which prevented presentation of an adequately drafted patent application. Indeed for many private inventors the first relationship with a professional patent agent does arise when the patent agent has to undertake damage control where an interest has been expressed in the invention and it is suddenly appreciated that the best attempt at patent protection by the inventor is grossly defective. Nevertheless given this risk it is clearly better to have some attempt at protection than none at all. There are some quite useful little books around which will give an inventor some idea of how to tackle defining the invention though the professional will, it is admitted, look on somewhat sceptically.

There are one or two services who undertake to provide "inexpensive patent applications ". Though not wanting to denigrate these services, one must question, if they do not attempt to achieve a "professional standard" which would be expected of a Chartered Patent Agent, whether paying what is nevertheless quite a significant fee does represent that much better value for money than an erroneous attempt at one's own drafting.

Another problem are 'invention competitions' e.g. in schools and colleges. Again participants may not be able to afford patent protection and run the risk of listing all rights in the development. Programmes are being investigated to encourage developing inexpensive protection which would give at least a breathing space to investigate commercial viability.

IN SUMMARY

It is admitted legal protection is expensive. "Cheaper" semi-professional variants may not be any real saving. Do-it-yourself can be disastrous but is better than nothing.

A discussion with a Chartered Patent Agent, even for 15-30 minutes, may give a practical view of protection versus commercial viability and alternatives e.g. Design protection.