IP LAW
W
hen patent attorneys first started plying their trade, their role was well- defined and discrete, no matter how
technically and legally complex it may have been.
However, some things have changed, and it is important that patent attorneys change with them. Te UK Intellectual Property Office’s website explains how Britain’s patent system had served it well during the Industrial Revolution but how by the mid-19th century it had become inefficient. Te patent office in its modern centralised form was established in 1852 and the Chartered Institute of Patent Attorneys followed in 1882, gaining its royal charter in 1891.
Where the patent attorney was essentially
concerned with getting a patent for an inventor to protect the invention in its own right, now patents can be thought of as commercial tools in the form of legal rights, and should not be considered as ends in themselves.
In this article I will consider a number of areas in which patent attorneys in the 21st century can add value to a company and provide practical commercial advice over and above the routine job of writing and prosecuting patent applications. I will focus on patents here but the same general principles apply to other forms of registered and unregistered IP, eg, registered designs, trademarks and copyright.
Understanding the business When meeting a new client, the questioning should not simply be about the IP. Tat will come with time. Te patent attorney in today’s world needs to understand the commercial heart of a company, inventor or research department.
What is its commercial raison d’être? What does it do and why does it do it? How long has it done it and for how much longer does it want to do it? What else does it do? What are its goals in the short, medium and long term? Who are its competitors? What has it done in terms of IP already?
Answers to all these questions will colour, direct and influence the actions taken subsequently to generate the IP to protect the innovation. Te IP will form part of a commercial approach to help achieve the client’s strategic goals.
www.worldipreview.com
New inventions Writing patents in isolation of commercial context can certainly work in terms of presenting an idea in novel and inventive terms and writing the claims to define broadly the desired protection. However, doing it this way risks a grave error— the patent may well protect something but will it provide the commercial protection that the client really needs? A pivotal role of the 21st century patent attorney is not merely to ask ‘what is the invention?’ When meeting an inventor to discuss a new invention, we should ask: why was the invention made in the first place?
Technical or commercial problem (or both)? Tis question to some attorneys may raise ideas of
technical problems to be solved. To
European patent attorneys in particular, when it comes to prosecution, this is the issue that will primarily concern the patent office. But that is not what is being asked. Te patent attorney should not initially play the role of the patent examiner. Rather, what should be asked is what commercial problem the invention solves and where it fits into the company’s strategy.
Patents take time to obtain and, although
potentially of significant value, have about them an inherent uncertainty. A patent is valid and useful when it is granted but at any time during its life new prior art can come to life that will void it from the start.
If a company is a start-up with long-term goals to develop a strong and leading position in a technical market then patents are without doubt worth the investment, irrespective of the inherent risks.
However, if a company is new and cash- strapped, not yet capable of
attracting
investment or bringing a product to market, patents, although still useful as a cost-effective way to generate property in the company, have to be treated with caution. Tere is a strong argument that applications in this situation have to be more narrowly focused in order to limit costs during prosecution while generating interest to investors. Tere is clearly a balance to be struck—going too narrow could render the subsequent patent very easy to avoid and therefore of little value.
World Intellectual Property Review Annual 2014 15
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