Choosing and Timing Intellectual Property Protection

Most inventors, particularly private inventors, are well aware of the need for intellectual property protection.  But the term IP law is unfortunately a misleading one in that it suggests a homogenous body of law whereas it is merely an umbrella term for a number of different types of protection varying very widely in character and secural.  A very rough break down is between those types of protection which arise inherently in the creation of the concept and those which protect reputation.  Some protection comes into existence without any procedure.  The stronger and more useful protection is that which is obtained by registration, for example a patent or a registered design.  These have the advantage of giving a document which identifies protection and which is much easier to exploit or license but a patent is not always necessary for a measure of protection.

 

The classic example of protection which arises simply on creation is copyright though copyright is of little value for technical inventions and protecting the "operation" of a new technology as distinct from a particular format.  This has no relevance to the whole field of chemical technology.  But it is clearly valuable in relation to software where it tends to be a major means of protection.  It has relevance where the value of a new concept lies, to a significant extent, in its appearance.

 

An innovator must consider whether the appearance is distinctive and it might be difficult to come up with an alternative which was as "sellable" because of its appearance.  "Design" protection might afford an adequate protection, at least for an article which has only a relatively short projected time on the marketplace.  One can of course apply for registered design but this must be applied for before one markets or publicises the design.  A useful protection is the Unregistered Design Right. Basically this protects against copying the appearance of any article for 10 years from its first sale to a maximum of 15 years from the time it was first drawn or a prototype made.  Copying must, however, be very close to the original to constitute a violation of this right.

Iain C. Baillie

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Traditional so-called artistic copyright also has a function in the industrial field but normally only for items which in the three dimensions have an artistic content, for example an artistically designed electric lamp.  If it is immediately obvious that a device would be just as appealing to the marketplace if changed visually, then one has to look to patent protection.

 

An alternative is, of course, trade secrecy but this is of little application for normal industrial articles where the manufacture is immediately apparent from an examination of the article.  It does have value in considering processes, for example tempering of steel.  Indeed there are those who say that, if the invention is a process which is not readily determinable from a product, then it is probably better not to go the patent route but to stay with trade secrets.  Very careful control must be maintained over operations and any transfer to other parties.  Always secure legal advice as to the best steps for controlling transmittal of information by way of confidentiality agreement.

 

If patent protection is the only possibility, it is absolutely critical that protection be sought before there is any disclosure.  Disclosure in confidence will not prejudice future patent protection but a breach of that confidence by the receiver of the information leaves only a very limited time for securing patent protection.  For the private inventor however, the major obstacle for patent protection is its very great cost and complexity.  One should seek professional help in the preparation of patent application.  There are many inventors who simply cannot afford such expense at a point which is quite critical to protect the idea and must consider "do-it-yourself" protection.  No article of this length can be adequate in suggesting to an inventor how to construct some form of patent application but there are one or two guidelines so as to avoid too many disasters in the amateur's application.

 

The great secret is thinking laterally. In the first instance there is no point in trying to draft a patent application until you have firmed up explicitly at least one operable embodiment of the invention.  Vague ideas and principles are not the subject of patent applications and the patent application which merely sets out "a good idea" is probably not worth the paper it is written on and more danger than anything else.  With a clear cut embodiment one then has to apply to this a two part test - 1. What was the closest known product etc. and what was the problem in that closest item? 2. How exactly does your invention solve that problem?

From that you can start to try and derive at least a reasonably broad expression of your concept.  Try to draft out a single sentence or a very brief statement of what it is you have invented, discarding any feature of your device which is conventional or does not contribute to differentiation from what is known, however relevant it may be to the working of the invention (though such essential features must be set out in the specific description).

 

One should bring out as much of the lateral thinking as possible.  How can you describe the essential features in as broad a language as possible to encompass alternatives to the various specific items of your particular device?  It is not very likely that you will succeed in coming up with adequate language to define your invention simply because this takes a great deal of training for the patent attorney.  Your document may avoid the danger of being far too narrow and not bringing out at least some principles of your devices as distinct from a single embodiment.  Clearly this counsel is only that of desperation when you cannot afford professional skills.

On the timing of exploitation, beware of those who will "assist you" in exploiting the invention for a fee which can sometimes include an alleged search.  Often these searches are inadequate and certainly the statements based on the search are misleading.  Although there are some genuine persons who will assist you they should be found by contacting an organisation such as the International Institute of Licensing Practitioners - http://www.iilp.net/ - rather than the Yellow Pages.  Here again the inventor must be prepared to do some work by researching in directories etc., those who manufacture this type of article and positioning the new device on the market together with some form of basic business plan as to commercial advantage, cost etc.

 

In any analysis of protection and exploitation, there must also be a realistic analysis of the likelihood of finding a licensee.  Except for a few rare cases the average private inventor is unlikely to make a successful invention which "reshapes an industry”.  A new automobile engine or aircraft construction is very rarely going to prove acceptable to the industry unless the inventor is a person with well-established credentials.  You would be better to accept a limited application of inventive capacity to ideas which are likely to be acceptable.  Practical industries are often more inclined to welcome relatively minor developments in, for example, hand tools, kitchen devices etc.

 

Also examine the location of markets.  Many inventions have a principal market in the United States where the rules on timing are perhaps more generous.  Consult a patent attorney, particularly a US patent attorney, since it is a calculated risk that is being taken.  Make use of systems such as the Patent Co-operation Treaty system to control cash flow.

 

Another concern is the possibility that in searching for a partner for a licence, there's a substantial amount necessary for legal fees for the agreement.  Drafting an agreement can be kept at a reasonable figure if the inventor does not get too greedy and insists on all sorts of broad options which are extremely difficult and expensive to draft legally.  While there is no such thing as a "standard agreement", nevertheless a relatively brief straight-forward patent licence created once a partner has been found should not be unduly expensive.  Remember options can be issued which can alleviate cash flow for legal protection.  Also consultation with organisations such as the Institute of Patentees and Inventors - http://www.invent.org.uk/ - can be very helpful.

 

I emphasise that these suggestions for possible economical "do it yourself" approaches to protection in innovation are for those who are unable to consider the admittedly significant cost of professional advice.  While there will never be a substitute for the advice of a professional, whether it be in drafting protection or in preparing licences, nevertheless there are means of alleviating the agony of limited funds.