Marriage of invention

Karl Barnfather of Withers & Rogers LLP uncovers the secrets of what makes a successful patent partnership

The partnership that exists between the engineer and the patent adviser is increasingly crucial in determining the success of corporate innovation strategies. However, the relationship is not without its tensions. So what makes a successful marriage of invention?

By far the most common instruction received by a patent adviser is one that comes out of the blue, accompanied by an urgent request to file a patent as soon as possible. This should tell us something about the nature of the inventor’s relationship with the world of patent protection.

This is how the story usually goes. A member of the sales team visits the research and development department to find out more about what’s going on. While chatting to an engineer, he discovers that work is underway to develop an improved product with some highly marketable new features. When meeting one of his key customers the next day, the salesperson can’t resist telling them about this exciting new development and before they know it, he has unintentionally disclosed the entire research proposition and as a result, may have rendered it unpatentable. Another common way that valuable research is disclosed unintentionally is at exhibitions and trade fairs or in conference papers, prepared by academics, and circulated to delegates at the event.

In such circumstances, the patent adviser has little option but to inform the company that it is already too late. The research work is already in the public domain and unfortunately, it is not possible to turn back the clock. Even if the Intellectual Property Office (UKIPO) is unaware of the disclosure and protection is granted, a single challenge could be sufficient to invalidate the patent.

A little loose talk or a show of academic prowess could end up costing the company dearly.

Having an idea

The best time for the patent adviser and the engineer to get together is actually before the idea has even been conceived. The most successful patent partnerships – those that work most efficiently and deliver most commercial value – operate a carefully managed invention process from the outset. While the idealist in us may like to think of inventors as Newtonian individuals, waiting for the apple to drop, the art of invention is in fact a far more scientific process, which involves developing practical applications out of abstract theory.

The extent of the patent adviser’s role in this process can easily be overlooked. For example, one key way that the patent adviser can help is by letting the engineer know when an invention is worth protecting. Engineers and their peer group may not always be the best judges of an invention’s patentability. After all, they are dealing with inventions every day and to them a technical development can seem like a relatively small step forward, while its commercial potential could be huge if it gives an existing product a new unique selling point (USP), for example. Working closely with the patent adviser at this stage can make this kind of early assessment much more effective.

The patent adviser can add value at conception stage in other ways too. Maintaining a dialogue with the patent adviser means the engineer has access to information about other related patent applications and this information can be used to direct research and development activity to areas where their inventions are likely to be most commercially viable. In some cases, the patent adviser is also able to provide valuable information on new ‘standards’ in emerging fields, such as mobile telephony or digital audio visual technology. This will help to ensure that any innovations under development are compatible with the dominant user technologies.

Encouraging internal disclosure

Most companies involved in research and development activity are aware that effective patent protection relies upon the timely disclosure of inventions. Engineers appreciate this too and a little encouragement in the form of a well-constructed invention reward programme is usually helpful.

At Withers & Rogers, we have recently undertaken research among companies in a variety of industry sectors, which has confirmed that invention reward schemes are widely used. Individual rewards can vary between a few hundred and several thousand pounds, and the value of cash incentives climbs according to the stage that the invention has reached – for example a reward for grant of a first patent is usually significantly higher than a reward for an initial disclosure.

Once an invention has been disclosed internally, the next step is to decide how best to exploit it. There are a range of options to consider and each requires a slightly different approach in terms of patent protection. Firstly, the invention can be sold in order to generate a return on the company’s investment in research and development activity. Alternatively, the invention can be licensed to a third party, backed by a licensing agreement, or the invention can be made and then licensed to the third party – an option which often requires the greatest investment in exchange for higher commercial rewards. Of course, many choose to use the patent to manufacture and sell the product themselves.

Regardless of which option is chosen, this is the end game for the patent partnership – the point at which the company realises the value of its investment.

Removing barriers

Even when the invention process is tightly-managed and an invention reward scheme is in place, engineers can occasionally fail to disclose their inventions appropriately. For the company involved this is cause for concern, and in some cases such failures could be prevented by increasing the level of interaction between the engineer and the patent advisory team.

It is not unusual for companies to prefer that the patent adviser is kept at arm’s length from the engineer in order to avoid disrupting research activity. For established companies with well-managed invention systems, this approach can work well and helps to ensure that interactions with the patent advisory team are kept to a minimum. However, there are inherent risks in taking this approach, and for most innovation-led businesses operating in fast-moving technological fields, a closer and more regular dialogue is usually beneficial.

Strategic patent advice is increasingly critical in determining a patent application’s success or failure, but perhaps more importantly it can also have a dramatic impact on its commercial value. To illustrate, in the 1700s the Montgolfier brothers invented the hot air balloon, but instead of protecting merely a literal description of their invention, a modern day patent adviser would recommend that they seek a much broader protection, such as ‘a lighter than air transportation device’. Increasing the scope of the invention’s definition in this way could have bought the brothers 20 years of patent protection in this dynamic field of research and development.

Like minds

Ultimately, the most successful patent partnerships are those where the engineer and the patent adviser share a passion for invention and a depth of knowledge of the specific area of technological research. By working closely together to manage and harness the value of inventions and advise on the strategic direction of research and development activity, this ‘marriage of invention’ will deliver lasting business value.

Case study

As a leading global engineering consultancy, providing a range of product development services to the automotive, transport and clean energy sectors, Ricardo is a prolific innovator. The company files numerous patent applications in the UK each year.

Backed by a team of 1,100 UK-based engineers, this focus on innovation has led the business to develop a rigorous process to ensure that its inventions are properly protected. Working in partnership with patent advisers at Withers & Rogers LLP, the engineers aim to assess the commercial potential of each invention at an early stage.

Jon Wheals, chief engineer of innovation at Ricardo, said: “Our patent advisers perform a key role in helping us to assess the real potential of our inventions. They carry out patent searches, often to very detailed technical criteria, and provide information about any incumbent patents which may limit the potential of our own work. Based on this knowledge we can then take an informed decision about how to proceed.

“Access to experienced patent advisors is crucial and it helps if they are ex-examiners, so they can tell us with some degree of certainty which inventions are likely to achieve patent protection and which are not.”

Ricardo has recently applied for patent protection for an innovative wind turbine bearing – an invention that reduces localised wear on the turbine’s moving parts, leading to much longer life.

Wheals adds: “This is an ingeniously simple invention that is already generating a high level of commercial interest because it has the potential to save windfarm operators a significant sum of money in costly repair work, especially for offshore installations around the UK. We expect to have a prototype in early 2009 and will be in a position to license the invention to manufacturers within 18 months.

“In this case, our patent adviser gave us early indication of the patentability of the invention and even though, from an engineer’s perspective, it might seem a relatively small change, we sometimes take for granted our creativity. The key is that its commercial value could turn out to be very significant indeed.”