17 December 2020
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Intellectual property (“IP”) – patents in particular – form a key pillar of many technology businesses. We believe that IP could and should form a useful pillar for many more, particularly growing technology SMEs, where the support that an IP portfolio provides is particularly important. Many of the intellectual assets of a technology business are conceived in the minds of the staff. When it comes to patents, these are the engineers and the scientists working to address problems and to develop better, more commercially valuable products. That value, having been conceived, should be nurtured to realise its potential.

One way to do this is for those same minds to have a full understanding of IP, and take responsibility for their own actions around it. In most cases though this is unreasonable and unsustainable, you can’t expect your team to be IP experts. In our experience it is better that everyone in a business has a solid, basic understanding of some important aspects of IP and its uses, in combination with a willingness to ask questions. This is the IP culture to encourage – one in which everyone understands that there is an IP process running within their business, and how they should actively engage with it.

In particular your team should be thinking about:

  • Recording and potentially obtaining all viable IP assets arising from your business activities
  • Keeping that IP safe
  • Using IP to support your business activities 

But how do you go about doing this?

The “how” for obtaining intellectual property is a complex process and exposing scientists and engineers, for whom this is not their primary role, to such complexity and detail can pose a serious risk of disengagement with the process. The key is to convey a baseline understanding of IP for your team and for them to know when further help should be sought. Questions like how do I obtain a patent? How does a patent attorney prepare a patent application? How do I know what a patent protects? are challenging and are questions for IP specialists to answer. The key question your team should be asking themselves is 'which areas should you focus on to begin with, to drive towards an IP culture?'

“My work is not patentable”

We hear this, and variations on the theme, regularly. Scientists and engineers, often by nature, are liable to “play down” the significance of their own technical contributions. Perhaps they perceive their idea to be trivial, and as such they believe it to be unpatentable. What is overlooked in this conclusion is that the standard for patentability is a legal one; in particular it’s a test that relies on a legal fiction called the “skilled person”. The skilled person has no inventive capacity by definition. An engineer who is, or may be, inventing clearly does have inventive capacity. For an engineer to compare themselves to the skilled person is therefore doing them a disservice. The skilled person is operating at an intellectual level below that of the inventor

Accordingly, the threshold for patentability is often significantly lower than your scientist or engineer might consider realistic. It is therefore critical that changes and developments that take place during the R&D process are 1) recorded and 2) considered for patentability. The latter review should be with someone within the business, or an external patent attorney, who has an understanding of your business goals and of the patent process. It does not have to be a time-consuming or difficult process, but it is an important one. If ideas are neither recorded nor considered, there is a risk that those ideas are forgotten and the potential IP is lost.

“My work will not form part of a commercial product”

Has a more cost effective alternative been developed? Is the idea currently technically too difficult to implement or manufacture? Has a lower risk alternative been identified for the product? Is the end user just not ready for this concept yet? Even if the answer to any of these questions is “yes”, it may still be the right thing to do to capture and potentially register IP for that idea. It is critical that such developments are captured and recorded. If not, then “reinventing the wheel” in years to come can become a real possibility, along with all the wasted resources that entails. Keeping records of technical ideas and inventions as they are developed is an important part of effective IP management, even if registered IP protection is not pursued. Part of the IP management process itself, for example invention disclosure forms, can be used to capture ideas like these. They do not need to be pursued to patent applications for these processes to be used and useful. The record is important because it provides a mechanism by which to discuss the idea with those in the business that do have a view on long term commercial value in the field.

Even without concrete commercial plans, if the idea or invention is reasonably developed, it is often possible to take the further step of pursuing patent protection. Technology in many areas is fast moving. Being able to predict what will be commercially valuable on the timescale of years is a significant challenge. Ideas and inventions developed today, may well become cost effective, commercially viable, and valuable to consumers in the coming years. When that happens, either you have the idea captured in your files ready and waiting to be picked up (having remained secret), or better still you have the patent protection in place. The alternative – “I think my engineer worked on that in 2015, but we have no records, and he has now left the business” – is not an attractive one.

To reiterate the point, it is unreasonable to expect the inventor to determine patentability or in many cases whether or not a particular idea might be commercially attractive on the timescale of years. However recording the ideas and discussing their potential value and viability is important. Without these systems in place your business might be missing out on valuable IP that is never even considered for patent protection or even recorded for future reference.

Keep your secrets secret

Scientists and engineers do not generally have the resources to protect IP on their own. They do however have the power to destroy the prospects of future IP protection. A patent application must be filed prior to publically disclosing the invention, for example. If the invention is publically disclosed before a patent application is filed, it will not usually be possible to obtain valid patent protection for that invention. It is critical that this risk is conveyed to those in your business doing the inventing, and beyond. It does not have be a complex message. And nor should it attempt to explain what to do in every scenario. Again, knowing the issue exists and asking questions at the right time is the important part. The message may be as simple as “disseminating information outside the business could do real financial and commercial damage. If you need to send information out, ask the right person before you do it”. There are ways and means to convey information outside your business whilst protecting your assets. And there are things that can be done in advance of sending out information (and in some cases steps you can take after the fact) that improve the situation. However, it is invariably preferable to take the appropriate action and avoid any damage being done in the first place.

Patents as a tool

So far we have looked at gathering your own IP from the source. But how can IP give something back directly to your workforce? How can your scientists and engineers make direct use of existing IP? Most technical fields have conventional textbooks that will bring staff to a level of understanding necessary to introduce a field. However many commercial fields lack the texts needed to bring someone up to the cutting edge – that is the level of development reached both within your business and within your wider field. This is particularly true in fields where scientific publication is uncommon. Why not use patent documents as a tool to do this? After all they are there for everyone to see as a written record of in-field technical advancements. Published patents and patent applications are readily, freely, and publically accessible. For example Google patents provides a simple search engine for published patent documents from around the world.

Your business could try:

  • Reviewing your own draft patent applications and invention disclosure forms. Reviewing a draft patent application will bring the reader up to date on your developments and technology. Another pair or eyes and a fresh intellect may also have their own contribution to the invention, strengthening your business’ position.
  • Reviewing your own patent applications and patents after they have been filed. The reader will learn what has previously been developed within your business that can give a baseline from which to work. It also builds familiarity with reading and digesting patent documents.
  • Reviewing the patent applications and patents of your competitors. Although a patent application is generally not published until 18 months after filing, competitor patent applications are a convenient resource for technical insight that is often overlooked. Such documents provide a useful route into a competitor’s R&D focus areas, which extends beyond their on-market products. What have your competitors been working on? How might their corresponding products work? Can I derive any useful insight from their work? Competitor patent understanding is also useful for more technical management and strategic roles. Do you see these inventions embodied in your competitor’s products? Or not? Why not? Do your competitor’s focus areas seem to be changing? Do your focus areas overlap significantly with those of your competitors? Note that some care does need to be taken when looking at competitor patents. There is a distinction to be drawn between using competitor patent documents for background, insight, and understanding on one hand, and straying into a patent-protected area with your own developments on the other hand. The latter may ultimately present a freedom to operate risk and care is required. 

In summary

IP is a specialised field. Not everybody needs an understanding of the details, and nor should they. To attempt to impart a detailed understanding across a business is to risk alienating the very source of your intellectual property. What is more useful is to develop a workforce with an IP culture. One that includes a widespread, basic, understanding of why IP is important and one that asks questions at the appropriate times.

Three initial ideas you might consider within your business:

  1. Convey to scientists and engineers that a great many ideas could be patentable, more so than they probably expect. Do not try to second guess what is patentable. Patentability is assessed against a lower legal threshold than an inventor will apply by definition. Inventors are simply too inventive!
  2. Convey the importance of recording all ideas and inventions as they go, and store them for later access. If you need to send technical information outside the business, discuss it first.
  3. Convey the opportunity presented by reading and digesting patent applications and patents belonging both to your own business and your competitors. With basic guidance on the structure and important parts or a patent document, it is generally relatively simple to understand the technical content, if not the legal effect of the document. You can learn a great deal about your technical field this way. 

Of course no two businesses are alike. There is no one-size-fits-all solution for an IP program that can simply be installed and left to run, and the ideas here are only an introduction to promoting an IP culture within your business. Mewburn Ellis is experienced in advising on, setting up, and supporting IP systems and processes for companies of all sizes, budgets and working practices. Whether you have little or no IP, or you have significant IP but are concerned that your business is not making the most of it, if you think we might be able to help you and your business just ask. We would love to hear from you. Our first steps will always involve understanding how your business works, why it is successful, and how IP can support your business to achieve your goals.

Dan is a Partner and Patent Attorney at Mewburn Ellis. He works on all aspects of the patent application process in the mechanical, electronics, and engineering sectors. This includes patent drafting and prosecution. Dan is also experienced in providing freedom to operate opinions and the freedom to operate process.

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