IP LAW
“THE PATENT ATTORNEY ADVISING ON A NEW PRODUCT SHOULD BE INVOLVED FROM THE START TO HELP MAKE THE IMPORTANT COMMERCIAL DECISIONS WITH AN UNDERSTANDING OF THE IP RISKS.”
With tax regimes such as R&D tax credits and the UK Patent Box, patents can oſt en provide a much quicker return on investment than was previously thought possible, but still they should be treated with caution.
Where to fi le A large
proportion of wide geographic
fi ling programmes start through the Patent Cooperation Treaty (PCT). A useful strategy combines this with the Patent Prosecution Highway (PPH). T e PPH is the collection of binational agreements between national or regional patent offi ces that take into account search and examination work done in other offi ces with the goal of
speeding up and streamlining parallel prosecution.
T is provides an opportunity. A country is selected which has a large number of PPH agreements, eg, Japan. Steps are then taken to accelerate prosecution there to try and obtain an early positive indication of patentability. T is can then be used in the large number of places where Japan has a PPH agreement, ie, the US, UK, Korea, the European Patent Offi ce, China, etc.
Sometimes a client may not want to use the PPH due to the possible fi nancial burden of having to deal with objections earlier. However, strategic planning of fi ling should always be done.
What to fi le T e preparation of a specifi cation should take into account the commercial position of the client with an eye on possible negotiations, acquisitions and sales. For example, it may be worth putting additional independent claims into an application directed to diff erent ‘minor’ inventive aspects, and getting them searched early.
One or more divisional applications can be fi led and a fast grant sought if the client may be looking to sell off a part of the company which uses the technology in question. T e attractiveness to a potential purchaser of
the
company or part of the company that is to be sold will thus be increased.
Registered designs Maybe registered designs are more appropriate? Perhaps, but registered designs are published by
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the patent offi ce or design registry. Anything made available to the public in an enabling way, eg, by written disclosure, public use, or sale of an article, in most cases cannot subsequently be validly patented. So fi ling a registered design application is not appropriate in some cases, particularly where subsequent patent protection may be desired.
Risks of third party IP T e modern patent attorney has to bear in mind the risk to a client of launching a new product or service. One of the patent attorney’s roles should be to provide risk analysis, which feeds into other considerations and drives commercial decisions such as whether to launch or invest further at all. T e IP alone is rarely enough by itself to clinch a decision but it is an important factor.
We see this when we advise companies at the launch stage or when a review is made of competitors’ IP or, more generally, when a landscape study is performed. We have performed many IP audits designed in part to answer the questions mentioned here.
Non-practising entities IP risks in today’s world are greater now than they were 10 years ago, never mind 50 years ago. In today’s litigious world, not only are innovating companies watching for competitor products but non-practising entities (NPEs, also known as ‘patent trolls’) are also out there with their ears and noses to the ground. Failure to think about these issues can have serious commercial consequences down the line.
T e patent attorney advising on a new product should be involved from the start to help make the important commercial decisions with an understanding of the IP risks. Sometimes, a robust devil-may-care approach may be
appropriate
depending on the type of product and who the other market players are. At other times, when the market is dominated by large patent-keen entities, eg, big pharma, a more cautious approach is advisable. T e patent attorney should be equipped and happy to advise in this area.
Confl ict in patents T ere is a confl ict at the heart of the patent system which arises from the inherent uncertainty that bedevils patents. It is this: at
World Intellectual Property Review Annual 2014
Avi Freeman heads the electronics, physics and mechanical engineering team at Beck Greener in London. As a European and UK patent
attorney, Freeman enjoys working
with UK and overseas high-tech companies, with a great track record in helping them to navigate the complexities of European, UK and overseas patent law. With experience in industry and private practice, he understands the commercial and legal goals of his clients.
www.worldipreview.com
the time when signifi cant investment of time and money is required, the likelihood of a single patent providing a return on the investment is unknown. A patent application almost always must be fi led before the applicant can know whether the patent will ever be allowed by the patent offi ce and whether the invention is likely to be a commercial success.
Big fi lers can overcome this with a numbers game. Large corporations can fi le 500 or more patent applications a year and if only 10 percent of them provide a return then that will more than cover the overall cost of the programme. Small and medium-sized entities dealing in smaller numbers of applications are inevitably playing a higher odds game. T e 21st century patent attorney must understand this and advise with it in mind.
T e role of the patent attorney in the modern world is broader and more commercial than it once was. Patent attorneys advising their clients today need to counsel not just on the nitty- gritty of how to get patents, but also on the strategically important question of where, and why, they should get patents in the fi rst place.
Avi Freeman is a partner at Beck Greener. He can be contacted at:
afreeman@beckgreener.com
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