Patents


Protecting inventions: Practical do’s & don’ts


Inventors not only come in all shapes, ages and sizes; they are to be found in many different sectors, including waste management. But what happens if someone discovers a new process, applies for a patent and then legal proceedings are initiated by a rival company? Patrick Kelleher and Ewan Grist explain.


Patrick Kelleher, partner and Ewan Grist, senior associate, Bird & Bird LLP


I


N 2008, Somerset inventor, Nick Stillwell, who owns Protomax Plastics, and his business partner Alfred Rodlsberger devised a new and improved process for moulding plastics, particularly waste plastics,


based on powder impression moulding (PIM) technology. In essence, the basic PIM process involved


placing plastic material in powder/granular form into two pre-heated open moulds, whereupon the plastic melts to form a skin lining each mould. A filler material with a foaming agent is


then added to one of the moulds and the moulds are closed such that the filler material becomes sandwiched between the skins lining each mould. The heat-activated foaming agent causes


the filler material to expand to fill the space between the skins, whereupon the finished article is allowed to cool and is then removed from the opened moulds. Stillwell and Rodlsberger’s improved PIM


process involved, among other innovations, the use of integrated channels within the moulds themselves through which hot or cold fluid could circulate to heat and cool the mould’s contents. The use of a unique ‘former’ enables the plastic skin to form on the side walls of the mould such that it completely encompasses the foamed core material in the finished article. In the basic PIM process used previously,


the moulds had to be moved between loading, oven heating and cooling stations to complete the process and there were inherent difficulties forming a side wall skin in this process. Having realised that their improved PIM


process offered significant advantages over the cumbersome and slow basic PIM process, Stillwell and Rodlsberger applied for a UK patent to protect their new process, which was granted in April 2010 (patent number GB 2460838 B). Protomax then started to commercialise the process in its P2 machines.


Idea


Legal proceedings In June 2010 however, Environmental Technologies plc (ERT) brought legal proceedings before the High Court to revoke Protomax’s patent, arguing that it was not inventive over the basic PIM process. Protomax instructed Bird & Bird


to defend them against this claim in May 2012. Bird & Bird first applied to transfer the proceedings to the Patents County


Recycling & WA S T E W O R L D


Court (PCC) on the basis that the PCC, rather than the High Court, was the appropriate forum for proceedings of this nature. Despite ERT’s opposition, the High Court agreed with Protomax and ordered that the proceedings be transferred to the PCC for trial. The two-day trial of the action was heard


by the PCC at the beginning of December 2012. Each party submitted evidence from an expert witness: Dr Peter Cox (Peter Cox Associates and chairman of the Plastics Consultancy Network) gave evidence on behalf of Protomax and Colin Williamson (Smile Plastics) gave evidence on behalf of ERT. On 5 February 2013, the PCC ruled


decisively in favour of Protomax, dismissing ERT’s arguments and finding that Protomax’s patent was valid. The judge said of the Protomax patent: “I


think there is a real problem to be solved here and in my judgment, (the patent) is a way of addressing that problem which was not obvious”. The patent will now remain in force until


2028. In light of the PCC’s decision, ERT will now be ordered to pay Protomax’s costs of the proceedings.


David and Goliath Speaking after the judgment, Stillwell, who likened the court’s decision to David’s victory over Goliath, said he welcomed the result which ended a long period of uncertainty affecting his ability to conduct his business on a day-to-day basis. “Being sued when you have done nothing


wrong is stressful and confusing, and Bird & Bird stood with us and turned the case around from a possible defeat with huge costs liability, to a victory.”


RWW


• Patrick Kelleher is a partner and Ewan Grist a senior associate in the intellectual Property group of Bird & Bird LLP. For further details, visit www.twobirds.com


2. If you think you have an idea that is patentable, do not disclose it to anyone else until you have filed for patent protection. Beware in particular demonstrations to


third parties (unless they are bound by written non-disclosure agreements), exhibiting at trade shows and press releases. If the public can find out about your invention before you have filed for patent protection, you may not be able to get patent protection at all.


Design Invention


3. If your idea is not capable of being protected by a patent, aspects of its may still be protected by design law and/or as confidential information.


4. Seek specialist intellectual property law advice from a firm of patent attorneys to determine the best strategies for protecting your ideas. While specialist advice can be costly, it is money well spent at this stage. If your idea is not properly protected, it will fall into the public domain for use by anyone.


5. If your idea is patentable, consider which geographical territories are or will be relevant to your business (i.e. in which countries would you want your idea protected?). Depending on your business plans,


patents can be obtained which cover just the UK or any number of other countries. If you do not request patent protection in those other countries from the outset, you will not be able to obtain it further down the line.


www. r e c y c l i n gwa s t ewo r l d . c o . u k Top 10 practical tips


1. Consider what can and cannot be protected by a patent. Broadly speaking, in order to be protected by a patent, your idea (whether a product or a process) must be both: • New (i.e. not have been done or used by anyone else before)


• Inventive (i.e. not simply an obvious improvement or step over something that has been done before)


• Research the other technology already known to the market. Now look at your invention and consider which aspects of it are new and inventive.


6. Enforce your patent. The mere fact that you have a patent may be sufficient to deter competitors from using your idea. However, keep a close eye on the market to identify potential infringers as early as possible.


7. If you do suspect an infringement, seek specialist legal advice at this stage. Assessing whether a patent has been infringed and by whom is potentially a complex issue and court action can be taken by a party who is wrongly accused of patent infringement. Your legal advisors can advise you on whether there is a strong case for infringement.


8. Enforcing your patent does not necessarily mean going to court. Often a ‘cease and desist’ letter from lawyers will suffice to stop the infringing activity in its tracks. It might also be appropriate to consider an amicable settlement with the other side, such as a licensing arrangement.


9. In some cases, bringing court proceedings against the infringer will be the only option to resolve the matter. Steps can be taken to minimise costs, such as using the Patents County Court (PCC) to enforce your patent. The PCC is an alternative to the traditional


High Court as a venue for intellectual property disputes. The PCC was created and structured to provide a suitable forum in which individuals and companies (SMEs in particular) can resolve their intellectual property (IP) disputes before a specialist IP judge in a relatively cost-effective manner. In particular, the PCC limits costs recovery


to £50K for the winning party and no more than £500K can be awarded in damages, thereby sparing litigants from the potentially unlimited costs and damages exposure they would face in the High Court.


10. Protecting your patent from attack Keep in mind that, as the patent owner, third parties may choose to bring court proceedings against you to revoke (i.e. knock out) your patent. Typically this is done to give the party bringing the proceedings the freedom to exploit the technology that was protected by the patent.


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