42 patent law How to identify, capture and


protect your intellectual property A large proportion of a company’s competitive advantage is determined through its intellectual property (IP) assets, which means a robust system for idea capture and protection is essential, writes Duncan White, partner at Marks & Clerk


Whether you are a manufacturer, a service provider or another kind of business, when you make developments to an existing product or service, or develop a new one from scratch, you are likely to generate new ideas in the process. But how can you identify whether they are worth protecting with IP rights? Key questions to consider include: does my idea have the potential for commercial value? Is the idea new? Is the idea inventive? If the answer to all three is ‘yes’, it is within your interest to protect it from your competitors.


Many large companies with research and development programmes will have established systems for capturing ideas, but this may not be the case for start-ups and SMEs. In fact, many might not even think they have ideas worth capturing. So, where


do you start? As a minimum during the development process, it is important to document your idea with particular focus on what is successful and unsuccessful. It is essential to keep the idea secret and avoid disclosures at all times – confidentiality agreements with third parties are recommended along with keeping records of conversations and correspondence. Once your new or improved product or service has passed the development stage and prior to its launch, you could consider a freedom to operate search; this will identify whether your development infringes any existing IP rights of others, allowing you to redevelop any contentious areas and avoiding potential future legal action.


Your IP assets can be safeguarded as a trade secret


– this would keep your idea confidential but it would not stop someone coming up with the same idea and exploiting it. There is also the potential for an employee to leave the company and take the secret with them. A patent on the other hand, if successfully granted, has the advantage of deterring others from exploiting your invention in selected locations for up to 20 years, as well as adding to the company’s value, which could be important for investment or future sale.


Although some may be concerned about the value of patent protection as the timescale and fees associated with doing so can seem daunting, the value of protecting your market share and revenue streams from copycats is significant. Patents in particular can also help to


generate secondary revenue through cross-licensing and can help the company look more attractive to investors.


Research and development takes time, effort and money. A robust patent that fits with your commercial strategy will help you make the most of your work.


Details: Duncan White 01865-397900 dwhite@marks-clerk.com www.marks-clerk.com


Hunting for innovations


from its success in stock market flotations or trade sales of ventures it has started up and invested in. An example is Provexis, which specialises in developing and marketing ‘nutraceuticals’ – foods that have a proven beneficial effect on human health. The flotation of Provexis in June 2005 generated a capital gain of £2 million for Angle and, since flotation, Provexis has continued to improve strongly.


Andrew Newland, the former head of KPMG’s innovation practice, founded Angle in 1994. His initial focus was on developing the consulting business, with some early successes in advising companies and government agencies on the successful commercialisation of technology.


www.businessmag.co.uk


..... continued from page 41


Involvement with spin-out businesses from academic research departments soon followed, and Angle now counts a number of universities among its IP partners, including the University of Cambridge.


Linked to Angle’s consulting business is its management arm. Angle takes on the management of research and science parks, incubators and enterprise hubs, on behalf of universities and economic development agencies. Besides its UK contracts, such as Mansfield District Council’s innovation centre, the company is now managing research parks in the US and Qatar


Many of Angle’s senior managers are former research


universities and companies. The Angle team’s skill lies in spotting new technologies that can fill a market need and that can be commercialised quickly. Often, new technologies can be identified when someone files a patent application.


scientists. They have a strong network of scientists and developers working in


Angle’s track record in investing in technology-based ventures suggests that when it comes to assessing risks, the management team have sound judgement. It started in 1999, with Angle’s first investments in biotechnology: NeuroTargets, Provexis and Acolyte Biomedica were all set up under Angle’s Progeny umbrella. Angle’s first exit came in 2004, with the sale of Exago for £4.9m, realising £2.4m for Angle’s 49.9% stake and a profit of £2.1m.


THE BUSINESS MAGAZINE – THAMES VALLEY – JULY/AUGUST 2014


Page 1  |  Page 2  |  Page 3  |  Page 4  |  Page 5  |  Page 6  |  Page 7  |  Page 8  |  Page 9  |  Page 10  |  Page 11  |  Page 12  |  Page 13  |  Page 14  |  Page 15  |  Page 16  |  Page 17  |  Page 18  |  Page 19  |  Page 20  |  Page 21  |  Page 22  |  Page 23  |  Page 24  |  Page 25  |  Page 26  |  Page 27  |  Page 28  |  Page 29  |  Page 30  |  Page 31  |  Page 32  |  Page 33  |  Page 34  |  Page 35  |  Page 36  |  Page 37  |  Page 38  |  Page 39  |  Page 40  |  Page 41  |  Page 42  |  Page 43  |  Page 44  |  Page 45  |  Page 46  |  Page 47  |  Page 48  |  Page 49  |  Page 50  |  Page 51  |  Page 52  |  Page 53  |  Page 54  |  Page 55  |  Page 56