more bang for your buck from your ip 11 february 2015 martin jackson and stuart raynor...
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More Bang for Your Buck from Your IP
11 February 2015
Martin Jackson and Stuart [email protected], [email protected]
More Bang for Your Buck from Your IP
• Getting the right IP in place
• Putting your IP to work
• Communicating effectively with the outside world
• Communicating effectively with your IP advisers
• Making the most of relevant tax breaks
Getting the Right IP in Place
• Range of IP rights (Patents, Trade Marks, Designs, Copyright, Confidential Information) available throughout the world
• But what do you actually need for your business and when?
• Where do you need IP? Global IP coverage is unrealistic.
• IP should always support your business plan
What Scope of Patent do You Want/Need?
• In an ideal world, as broad as possible, but less likely to be granted and increased expense
• What are you doing/planning to do?
• What are your competitors doing?
• Scope of existing patents can be tailored by amending claims (within reason) or new patents filed to cover new developments
• Can become obvious what a Patent Office would be prepared to grant – cash that in?
What to Protect with a Design or TM
• Registered Design may be useful in protecting the “look” of a commercial product
• Design based on an early version of a product may not cover the final form – file just before launch of product
• Variety of trademarks may be available, e.g. word-mark for company name and device mark for logo
• In which fields will you use your trademarks? Apply for protection in relevant ‘classes’ covering areas of intended use in next five years
Putting Your Patents to Work [1]
• Getting and maintaining patents can be expensive, so make them work for you!
• Granted patents may be used to:– Ring fence your USP in the market– Stop a competitor launching a product or getting their own patent– Generate income through sales/licensing– Attract interest in your company, including from investors– Reduce Corporation Tax
• How you use your patents will depend on your business plan, which is likely to change
Putting Your Patents to Work [2]
• Be flexible with your patents, particularly if they are no longer working for you
• Can IP no longer relevant to you or competitor be sold/licensed? You are paying annual fees!
• Keep up-to-date with competitors’ commercial and patent activity and adapt accordingly
• Entry into patent “Green Channels” could advertise cleantech credentials of your technology
Communicating Effectively with the Outside World
• Ultimately, to be of use, others need to be aware of your IP rights
– Patent enforcement in Court will be expensive– If others know about your rights, infringement can be avoided– But be careful about how you approach competitors – avoid
threats
• Publicising your IP– Make the public aware with suitable advertising/press
releases/trade articles on new innovations? Include patent info on your products/website?
The Dangers of Disclosure
• Disclosure of your invention (in writing, online, orally, etc) could prejudice chances of securing valid patent protection for the technology
• IP team to review all proposed publications?
• Defensive disclosure may be an alternative to patenting
Communicating Effectively with Your IP Advisers [1]
• No-one knows your business or invention as well as you do…
• IP advisers are skilled in extracting the relevant information from you best to protect your interests
• Good communication between scientists and IP team is crucial so that appropriate steps to obtain patent protection can be taken before it is too late
• Be open: IP advisers are on your side and should be open with you in return!
Communicating Effectively with Your IP Advisers [2]
• Don’t leave things until the last minute – makes communication difficult and may be more expensive
• Keep your advisers up-to-date of developments/changes– Regular review meetings tend to be very fruitful– Advisers may know of courses of action you weren’t aware of
Common Pitfalls
• Trying to handle everything yourself
• Not capturing inventions correctly when applications are drafted
• Not allowing scientists to communicate with IP advisers
• Not telling IP advisers if/when your business plan changes
• Allowing scientists/marketing department free rein to publish or advertise
• Losing sight of the bigger picture
Patent Timeline – First Twelve Months
T = 0 File first (priority) application
T = 12m File international application
T ~ 6m Search results available
Discuss invention with patent attorney –
prepare application
Discuss search results and any
necessary amendments
Business plan?
Business plan?
Patent Timeline – Twelve to Thirty Months and Beyond
T = 12m File international application
T = 30m Convert international application intonational applications
T = 18m Publication
Discuss further search results, and countries
of interest
Discuss any objections
Business plan?
Business plan?
Tax Breaks – Knowledge Box
• A proposed way to reduce Irish Corporation Tax payable on profits related to patents
• Patent related profits will be subject to an Irish corporation Tax rate of 6.25% (c.f. usual 12.5%)
• Government wants to encourage R&D to be performed in Ireland and for companies to choose to be based in Ireland/pay Irish Corporation Tax
Knowledge Box – What will it be like?
• Netherlands Model– Need to account for profit related to each patent– High accountancy burden– May make little difference on your IP strategy
• UK Model– Patent is seen as a certificate that your invention qualifies– All profits (minus some deductions) relating to the product sold
are charged at the reduced rate– Allowed some companies to take advantage even without R&D in
UK
• OECD Forum on Harmful Tax Practices– UK has had to agree with Germany to reign in its Patent Box
regime– Probably will continue, but R&D activity will have to take place in
UK
Knowledge Box – Suggestions
• Knowledge Box may greatly increase the value of narrow patents, even if competitors can avoid them
• Might want to change accountancy practices early so that you can account for profit on particular products
• Seek narrow patents solely for this purpose?
Tax Breaks – R&D Tax Credits
• Provides Irish Corporation tax relief for companies engaged in scientific research and development programmes
• A 25% tax credit for qualifying research and development expenditure
• Credit is set against a company’s Corporation Tax liability
• Applies to spending on failed research as well as successful
• “seek to achieve scientific or technical advancement” and “resolution of scientific or technological uncertainty” - similar to patent position
Case Study
Old Technology
Optical
MechanicalSorting
nHDPE
cHDPE
New Technology: Patent Applications in US, Canada and Europe
NIR
MechanicalSorting
nHDPE
cHDPE
Claim 1 covers a method of separating HDPE
SpecialLight
Source
Claim 4dep on 1
Mixed nHDPEand cHDPE
heating and/orlow pressure
Claim 3dep on 1
Removal of wrap-around labels using compressed gas
Claim 2dep on 1
Objections Raised During Examination
• The US and European Examiners have objected that claim 1 is unallowable because it covers any HDPE product and he has found an earlier document relating to detecting the type of HDPE in a hard hat manufacturing process.
• Claims 2-4 would however be allowable.
US and Canada – Client Letter
“Claim 2 cannot be used to protect the US market because of the change in law; and claims 3 and 4 are not commercially useful as they can be worked around. So please abandon the US and Canadian patent applications.”
The client has made a decision to abandon the patent applications which no longer suit their business model and so save unnecessary cost. But, are they right that the applications cannot support their business in North America?
Europe - Client Letter
“For the European market, no-one else makes the compressed gas label remover and we have decided to always incorporate this in our machines. Please therefore respond by combining claims 1 and 2 to obtain a granted patent quickly which covers the machines that we sell. This may also enable a Patent Box claim to be made.”
The client has decided to cash in on a claim the Examiner has said is allowable. Is this a sensible approach?
New Invention – Client Letter
“Moving around shredded bits of plastic is much easier than moving whole bottles. The sensor needs to sense quickly as the small particles move faster, but using the special light you already know about this is just about possible. This invention will make the old technology instantly obsolete! Please prepare and file a patent application today since an article in the industry journal “Rubbish” will be published tomorrow.”
What is the best way to proceed in this situation? Quickly drafting a new application is one approach, but is there anything else that can be done?
New Invention – Client Letter
NIR
Sort byblowing
nHDPE
cHDPE
SpecialLight
Source
Mixed nHDPEand cHDPE
Shredding
European Competitor Product – Client Letter“I am going with my sales team to a trade fair in Germany tonight. We think a competitor is going to launch a new machine which works as shown...”Optical
and/orNIR?
MechanicalSorting
nHDPE
cHDPE
SpecialLight
Source?
Mixed nHDPEand cHDPE
Rolling
European Competitor Product – Client Letter
“... I plan to tell the competitor about our European patent application in the hope of scaring them so that they take their product off the market. I assume it is their fault if they take their product off the market even if they don’t really need to!”
What risks is the client taking and are there any better suggestions?
Hints - What is the client looking for in the competitor product? Is there a risk in what they propose?
European Competitor Product – Client Letter
Opticaland/orNIR?
MechanicalSorting
nHDPE
cHDPE
SpecialLight
Source?
Mixed nHDPEand cHDPE
Rolling
Conclusion
Communicate regularly with your patent advisors Keep them up-to-date on changes in your business plan and changes in your product. Once we are aware of the relevant information and how you intend to use your patent portfolio, we can advise on the various options and discuss with you how best to proceed.
PATENT ATTORNEYS • TRADE MARK ATTORNEYSLONDON • OXFORD • MUNICH
14 South Square, Gray’s Inn, London WC1R 5JJT +44 20 3077 8600 F +44 20 7242 [email protected] www.jakemp.com