Business and Technical Information from Patent Databases

Jane Lambert

An invention is a solution to a technical problem. When applying for a patent for an invention, the inventor has to file among other things a document known as a "specification".  Such specification must contain a description of the invention and any drawing referred to in the description and disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art. In due course, the specification is examined by officials of the intellectual property office known as "examiners" for compliance with the legislation governing patents and published on the office's website for all to see.

As an invention has to be new and involve an inventive step to justify a patent, such publications are important sources of scientific and technical information.  Many of those publications are held on giant databases such as the UK Intellectual Property Office's Ipsum, the European Patent Office's Espacenet and Google Patents.

These are two good reasons for consulting such a database.  The first is that you have an invention for which you seek a patent. You will want to check the prior art to ascertain whether your invention really is new and does involve an inventive step.  In almost every case your patent attorney will do that for you when you first instruct him but, if there is something out there that you can spot for yourself, you can save yourself a lot of time and money and instruct him more effectively by making your own search.  The second good reason is to find out about the latest technology.  In Why researchers should care about patents, the European Patent Office offers three advantages:

• Avoiding duplication of R&D efforts and spending; 
• Finding solutions to technical problems; and
• Gathering business intelligence. 

Henk Heus actually gives 10 Reasons Why Research Scientists Should Patent Search though these seem to be substantially the same as the EPO's (see 29 Oct 2015 GQ Life Sciences). According to Heus, up to 30% of R&D expenditure is wasted on duplicating research that has already been carried out.
Different databases will allow you to search in different ways.  With Ipsum, you need the application or publication number and the first page will look like this:

From the menu in the top right-hand corner, you can select the documents that you need.  Nearly every transaction relating to the invention will be recorded on Ipsum. So if you want to trace the prosecution history this is the place to go.   Espacenet and Google will allow you to search by proprietor, title and other search terms as well as by number.  These are the tools that you will use to make a more general enquiry,

When you find an invention that interests you can choose the full specification or the parts of the specification that interest you most such as the abstract, description, drawings or claims. The abstract will be a summary of the invention.  The description is essentially an instruction manual. It will identify the problem that the invention seeks to solve, discuss previous attempted solutions where they fell short. set out the solution in principle and then give an example.  It may do that by reference to numbered diagrams known as the "drawings".  At the end of the specification, there will be numbered paragraphs known as "the claims". That is the monopoly sought by the applicant.  Usually, the widest is expressed first and all subsequent ones tend to be narrower than the first rather like a matryoshka doll.    You should remember at all times that the specification is addressed to the "person skilled in the art", that is to say, the person or team of persons having the knowledge, skills and experience to make or use the invention.  Some words or terms may have a special meaning which is different from everyday usage.

While not essential, some introductory training in patent searching can help at the start.  Patent search workshops have been offered from time to time by the British Library and some of the other Business and IP Centres around the country. I shall be giving a short one-hour introduction to patent, trade mark and design searches and how to read patent specifications at the Menai Science Park on Angelsey between 13:30 and 14:30 on 29 Nov 2019 (see How to use Patent, Trade Mark and Registered Design Databases 2 Nov 2019 NIPC Wales). If you want to sign up for the class which is free, click here.

Anyone wishing to discuss this article or patents generally should call me on 020 7404 5252 during office hours or send me a message through my contact page.

How to make Money from your Invention: Licensing

Jane Lambert

In How to make Money from your Invention 13 Sept 2017, I introduced readers to the EPO's Inventors Handbook. Readers will recall that the Handbook advised that there are basically four ways of exploiting an invention:

• A licensing agreement with a company
• A business start-up: get your idea to market yourself
• A joint venture 
• Outright sale of the idea.

In this article, I shall consider the first of those ways, namely licensing the invention.

The Handbook explains that a licensing deal is one that allows a party known as a "licensee" to use the invention in return for a periodic payment known as a "royalty". It adds that 

"The exact terms of the licence must be negotiated in a process that can be lengthy (often many months) and complex. The licence is a binding legal document, so it is usually essential to involve patent attorneys and other legal professionals."

The Handbook continues:

"For many inventors, licensing is the best way to benefit from an invention. The main reasons are:

• The licensee bears the costs and risks of production and marketing.

• Only established companies may have the resources to exploit an idea with major potential.

• Licensing can provide the inventor with an income over many years for relatively little effort."

However, it also warns that "only the strongest forms of IP will interest potential licensees" which in most cases means a patent.  Licensing is often seen as a soft option compared to setting up a new business to market the invention, but, in many if not most cases, the reverse is true.

For a start, unless you are answering an express invitation from a company to submit your invention, you are likely to spend a lot of time and effort looking for a company that could make money from your invention. Finding a company that can make money from your invention is not the same as finding a company that makes a product like your invention. If, for example, your invention renders obsolete a technology in which a company has invested heavily or threatens an income stream such as the supply of consumables or replacement parts, such a company may be the last business on earth to be interested in your product.

Once you have found a potential licensee you have to persuade that company that it can make money from your invention.  Sometimes, nothing short of a detailed business plan will do. That is bound to be a bit hit and miss as you are unlikely to have access to the financial, marketing and technical information that is available to the company's managers.  Even companies like Procter and Gamble and Henkel that invite submissions from inventors require those inventors to show how the invention will fit into their product range. They usually impose strict legal and technical requirements.

Except for companies like P & G and Henkel, you will have to give some thought as to whom you will contact and how you will present your invention. As I said in Finding a Route to Market for Your Invention - Unsolicited Approaches are not usually a Good Idea 25 Feb 2012, you are unlikely to get anywhere with an unsolicited submission. Your best bet is to find out as much as you can about your potential licensee through industry events like trade shows and seminars.  The inventors who are best placed to license an invention are those already in an industry or academics in a relevant discipline. Members of the public with no special connection with the industry will find it hard to sell their ideas.

As a licensee would take a licence under a patent or other intellectual property right, your intellectual property strategy must be one that works for your licensee rather than you.  Your invention must be protected not just in the United Kingdom but in all the countries where the invention is likely to be sold as well as those in which it can be made. Unless you intend to grant an express licence to your licensee you will have to take proceedings against infringers and resist revocation applications in each and every one of those countries. That can be very expensive for a private inventor or small business.

Finally, do not expect your licensee's management to be particularly kind to you.  Their job is to look after their shareholders and not to look after you.  They are likely to drive a very hard bargain in the licensing negotiations. After the licence is granted they will construe it in a way that suits them. Once they have learned how to make your product and developed a market for it they may try to challenge clauses they don't like or seek reductions in the royalty or other payments. When negotiating the licence you should think about dispute resolution and choose a method and governing law that works for you.

In negotiating your licensing agreement you are likely to need the services of a patent strategist who could be a lawyer with experience of licensing or a patent or trade mark attorney, an accountant with expertise in licensing and tax incentives for new technologies as well as a patent attorney.  Should you wish to discuss this article further, call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

Business Planning and IP: A Practical Example

Jane Lambert

Yesterday I wrote Why every business plan should take account of intellectual property 3 Apr 2016 4-NIPC News.  I explained:

"Every business no matter how small nor how simple owns some kind of intellectual asset that is vital to its trade. It may simply be the name or reputation of its owner in the case of a retailer or a tried and trusted recipe for making sponge cake in the case of a tea shop or sandwich bar but if it attracts customers to the business it is an asset which needs protecting, managing and exploiting."

I added:

"Conversely, a business may need to use the assets of somebody else's assets. A photo on the internet perhaps for the company website or maybe some software for the computer. It needs to plan how it is to acquire the right to use or even buy that asset and how much it is prepared to spend. All of these matters are at least as important to the start-up as the lease to an office or the purchase of a delivery van."

I promised to blog about the topic and this is the first of my promised articles.

What is Intellectual Property?

Intellectual property is simply the collective name for the bundle of laws that protect investment in generating intellectual assets.  They include patents, copyrights, trade marks, registered designs and unregistered design rights as well as judge made rules that prevent one trader from supplying goods or services under a name or trading style that is the same as or similar to someone else's or the unauthorized use or disclosure of secret and sensitive technical commercial information.   Intellectual assets are the brands, designs, technologies and creative output that tend to give one business a competitive advantage over others.

Not all Intellectual Assets are Equal

Not all intellectual assets are of equal value. There are, for example, inventions that no one want such as the three legged tights in the European Patent Office's Seven Deadly Sins of an Inventor.   There is no point in spending thousands of pounds on patenting them.   Similarly, there are distressed brands and designs that are so pedestrian or so ugly that they put consumers off the products rather than attracting them.  It would be a complete waste of money to apply for trade marks or design registrations for them.

Needing a Plan

Intellectual property rights - particularly patents - are expensive to obtain, manage and enforce. Not even the biggest companies try to protect every intellectual asset they possess. Experience teaches them which intellectual assets are worth protecting and which are not.  By definition, those launching new businesses, including many inventors, will lack that experience.  They need a plan to identify the intellectual assets that require legal protection and to tailor such protection to each asset's requirements.

A  Simple Five-Point Plan

Here is a simple five-point strategy for start-ups and other small businesses.

1. Identify the main revenue streams for your business over the business planning period. List the profitable products or services that you supply or for which your receive royalties or licence fees.
2. Consider the likely threats to those income streams. In most cases these are going to be commercial. Competitors will launch new products, reduce their prices or maybe consumer buying behaviour may change. Only in a minority of cases will you have reason to fear copying of your designs or technology or adoption of similar branding.
3. Devise appropriate counter measures.  In many cases these will be commercial too even if you fear copying or passing off. In some circumstances, launching a new model, re-branding, reducing your prices or finding new markets can be as effective and often cheaper and  more certain than litigation. However, a commercial option is not always available or attractive. For those cases where it is not you may need to plan a legal response.
4. Choose the optimum legal protection.  Put yourself in the position of your customer and consider why he or she is likely to find your product attractive. Is it its appearance, the way it works or the reputation of your business? If it is the appearance of your product you should see whether you can register its design either for the UK alone or the whole EU. If its your reputation you should think about registering your business name or logo a trade mark. If it is the way the product works or is made a patent may be the best option. If it cannot easily be reverse engineered you could keep it under wraps as a trade secret. Maybe unregistered design right will be enough. Factors to take into account will include the shelf life of your product, the size and value of the market, whether you want to sell it abroad and all sorts of other matters.
5. Make sure you can enforce your legal protection.  Although bootlegging, counterfeiting and piracy are crimes as well as torts primary responsibility for enforcing your intellectual property rights rests with you. That means bringing infringement proceedings in the civil courts. In England and Wales the costs of a High Court action can exceed £1 million. In simpler cases that can be brought in the Intellectual Property Enterprise Court recoverable costs are capped at £50,000 for determining liability and £25,000 for assessing damages or other profits to be disgorged. There is a small claims track where costs are limited at a few hundred pounds for certain types of IP claims under £10,000. If you cannot afford such costs out of revenues then you should consider intellectual property insurance or other kinds of funding.

All of those matters, particularly funding, should be in your business plan. If you want to discuss this article or intellectual property strategy generally, call me on 020 7404 5252 or contact me through this form. 

Digital Business Academy

The Digital Business Academy is a collaboration between TechCity UK, Cambridge University Business School, Founder Centric and University College London to provide students with the skills they need to start, run, or join a digital business. There are 8 courses which are delivered online and through which students can work at their own pace.

Those courses are as follows:

• Size up your idea – UCL
• Turn your idea into a digital business – UCL
• Develop and manage a digital product – Founder Centric
• Make a marketing plan – Cambridge University Judge Business School
• Build the brand – Cambridge University Judge Business School
• Understand digital marketing channels – Founder Centric
• Run a digital marketing campaign – Founder Centric
• Master finance for your business – Cambridge University Judge Business School.

I signed up for the programme and have already completed the first part of the first course. Teaching is delivered by short videos and articles. There is also a networking forum. I shall let you know how I get on.

GrowthAccelerator: the Next Best Thing to Business Link

Until November 2011 there was an integrated business advisory service known as Business Link. It maintained a comprehensive website and a network of local business advisers who advised and assisted up to 10,000 businesses a week between them. Those services were generally of very high quality and were free at the point of use.  Funding for those services was provided by the regional development agencies. When those agencies closed in 2011 the local Business Link network closed with them. The Business Link website survived a little longer but is now absorbed into the gov.uk.

Whether or not the end of Business Link was good bad, there can be no doubt that the service is missed. In the United States the Small Business Administration provides a service that looks very much like that used to be provided by Business Link and the devolved administrations in Scotland, Wales and Northern Ireland have maintain comprehensive business advice websites. In England there is a range of successor services such as the British Library's Business and IP Centre and its partners in Birmingham, Leeds, Liverpool, Manchester. Newcastle and Sheffield (see "Enterprise and Libraries: a New National Network of Business & IP Support" 6 March 2013) and the mentorsme.co.uk (see "'Oh Me. Oh My. I hope the Little Mentor Comes By' - The Banks New Mentoring Network" 22 July 2011).

Possibly the service that comes closest to Business Link is the GrowthAccelerator which I learned about at a presentation after the The Sci-Tech Daresbury Business Breakfast Networking Event on the 22 Nov 2013. GrowthAccelerator describes itself as

"a unique service led by some of the country's most successful growth specialists where you’ll find new connections, new routes to investment and the new ideas and strategy you’ll need for your business to achieve its full potential."

It is a partnership  between Grant Thornton, PERA, Oxford Innovation and The Winning Pitch which claims to have helped over 10,000 businesses since its launch in 2012. It operates by identifying priorities for growth, developing a growth plan and providing coaches to help with the execution of the plan. It provides those services for a fixed fee.

I chatted with several of the presenters after the talk at Daresbury and mentioned the similarity to Business Link. I was not surprised to learn that several of them had been Business Link advisers.  Like Business Link the GrowthAccelerator signposts businesses to other services and opens doors. It holds clinics, seminars and other events on all sorts of topics such as accessing finance and marketing. Business owners who want to learn more can request a free consultation through the company's website.

If you want to discuss this article or any other related topic give me a call during business hours on 020 7404 5252 or fill out my contact form. You can also reach me on Facebook, G+, Linkedin, twitter and Xing, Merry Christmas.

The Downturn may be the Best Time to commercialize your Invention

Since October I have been making the rounds of the Northern inventors' clubs with my presentation, "The Coming Economic Downturn: How it will affect Inventors and what they can do". My message is necessarily gloomy but I try to finish on a high note that an economic downturn is often the best time to start a business. There are a number of reasons for this. Costs are low. Governments tend to prime pumps. At a time when most businesses are shedding labour rather than recruiting most entrepreneurs have much less to lose.

That message is usually received scepticlly so I was heartened considerably by Sanjiv Buttoo's feature on the BBC website "Business brains urged to take the plunge". The article features an interview with Ajaz Ahmed who started Freeserve in 1998. When the service was launched, most homes in the UK connected to the Internet through an 0845 number for which they were charge local calls on top of an annual or monthly subscription to their Internet service provider. The idea behind Freeserve was to take a share of the charge for the telephone call rather than charge a subscription. This simply proposition proved extremely popular with the result that Freeserve became the biggest ISP in Britain. Its growth attracted the attention of the French giant Wanadoo which is a subsidiary of the French national telephone company.   Freeserve merged with Wanadoo giving Ajaz  a very substantial share of the merged company.

The reason I happen to know all this is that Ajaz is a local lad and he is involved with a number of institutions with which I am also interested.   There include the Media Centre where our chambers are based and the University with which we have worked. The article begins with the words:

"Budding entrepreneurs should take advantage of the current economic downturn and take the plunge, a self-made millionaire from West Yorkshire is urging."

"Exactly the message I have been putting about in my presentation," I thought to myself. "If the inventors won't take it from me maybe they will take it from someone who has actually made his fortune and at a fairly young age."  

The articles continues with the following admonition from Ajaz that despite the downturn in the economy, now is the time make money

"You can negotiate a good deal on renting a shop or unit, hiring staff, advertising or even buying cheaper raw materials 

Now is the time to start up with minimal costs, but you need to have that idea or you're wasting your time."

Exactly! The article continued with some examples of people in and around Huddersfield who were actually doing this. Mohammed Ramzan who is also in the Media Centre and even more impressively a couple of schoolboys from Elland who seem to making serious money from publishing their own magazine.

If any reader wants to take not my advice but Amjad's he or she will get a lot of help. Not just from me but from the patent and trade mark agents, solicitors, accountants, marketers, product designers and other experts on my IP Yorkshire panel if they happen to live in Yorkshire.   You can access their expertise in many ways, through the Leeds and Sheffield inventors clubs and the clinics in Barrnsley, Bradford, Halifax, Huddersfield, Leeds and Rotherham. 

If you don't live in Yorkshire, don't worry. I am setting up similar networks in other regions starting with the North West so we shall soon be able to help you wherever you live. Ajaz emailed me yesterday when I said I liked his sentiments: 

"in all this doom and gloom there are opportunities for the brave one, lets hope we see success stories emerging from this sad period."

Let's make sure that happens.