Practical Guidance on IP Plans and New Electronics Product Development
This document is not to construed as legal advice. Contact a patent attorney for such advice.
Nearly every new electronics product development needs an IP (intellectual property) plan of some sort. It’s wrong to think of IP as just patents. It can be a trademark, copyrights, design right, patent, or any combination of them. However, this article does concentrate on patents – take advice from a patent attorney on the other items – note they are less demanding than patents. Whilst it is critical that patent attorneys are involved in the process from the off, it is also also important that entrepreneurs and developers have at least a working knowledge of the process, its pitfalls, risks, value, and applicability in whatever the development specialism is.
After reading this article, what next?
The most important thing to remember is keep it to yourself and get proper advice from an accredited patent attorney.
- Once your idea is in the public domain, you cannot patent it: it’s possible that your idea isn’t a good candidate to patent. But if you tell someone about it, particularly in writing, that automatically renders the idea unprotectable. Patentable or not, keep your ideas to yourself until you’ve talked to a patent attorney.
- Have a meeting with a patent attorney: book a meeting with a patent attorney. I’ve yet to bump into one that will not give at least an hour of advice for free. It will make a lot of difference.
- With the assistance of the selected patent attorney, start constructing a IP Plan.
What is the value of an idea that’s considered for a patent?
It is important to be realistic about the value of an idea. There is no sugar coating in what follows:
- Just an idea: To be honest, it is probably worth absolutely nothing no matter how good the idea. It is possible, if the inventor/s are from a famous background such as a top university or leaders in a field that it may attract some value, but in most cases it should be assumed to be worth nothing
- Prototype stage: the value at this stage is a little dependent on the prototype status (TRL – technology readiness level). But some value is attributable once it is clear the idea can be realised and will fulfil its role. Don’t expect this add much value to the patent – the following bullet point is more important.
- Viability and route to market: Sufficient marketing and research into the route to market, particularly if supported by letters of intent or better still orders, will start to add value to the patent if credible.
- Approaching potential clients and investors: we wouldn’t normally recommend approaching investors and/or potential clients until this stage has been reached. People with cash don’t invest in ideas – there needs to be something concrete.
- Operations: producing a final prototype is very different from having a design evolved such that thousands can be made. Operations readiness only adds value if the previous bullets are satisfied.
- Sales and Marketing: this is the big one. If a credible market niche can be boasted along with real sales, the value of the patent will start climbing.
How are Patent Costs Controlled?
Patents are extremely expensive. A big and common problem is establishments allowing patents to proceed to publication before the product/idea in question has an established revenue stream. The following are guidelines and information to be considered:
- Always consult your patent attorney if publishing is being considered. Advice from a professional is critical, and actually crucial if a total has isn’t to made of the whole thing.
- There is always an option to cancel an existing patent and re-apply. There is no cost involved, and it means publishing can be put off. Obviously there is a risk that someone else makes an application for the same thing in between the date of the original filing and the re-application. Taking advantage of this option is often very useful for stopping intellectual property costs from getting ahead of revenue, but always take the advice of a patent attorney.
- The more countries that are covered the greater the cost. This not just from establishing the patent in the region but also translation costs too.
- The golden rule, except in special circumstances, is to make sure that a revenue stream has been established before allowing a patent to become published.
- An important point that is worth noting is that patents are more brutal than the tax man in terms of demands for payment. If a payment date is missed, the patent is lost.
What has to be shown for a patent to be valid?
Most people only recognise the novelty criteria for a patent, but there are actually three criterion, and novelty isn’t the most onerous to meet. The three criterion are:
- Commercial applicability: This is usually the easiest criteria to meet. The idea must be commercially exploitable. As the reason for getting a patent is usually to protect the income that a novel idea might attract, this criteria is normally readily established.
- Novelty: The idea needs to be new. In other words it hasn’t been thought of and published by anyone else previously. The technical term for this is prior art. The obligation is to show there is no prior art that threatens the application. This spawns searches. Amateur searches are useful and should be conducted. When an important event like publishing of the patent is about to happen, it is advisable that a professional patent search for prior art is conducted via a patent attorney. A common mis-conception with regard to protection of an idea is the belief that once a patent application has been made, the idea is protected. This isn’t the case because the application is secret until it is published, which can be up to 18 months after application filing. This means that in the period stretching 18 months before an application someone may have filed threatening prior art that takes precedence.
- Inventive Step: this is probably the most demanding criteria. Put simply, the idea proposed for a patent mustn’t be obvious to a skilled person, by which is meant a person skilled in the discipline that the idea refers to. When patents are being examined, this can become more testing because it isn’t uncommon for a patent examiner to marshal evidence from different sources and claim them to be from a single skilled source. Inventive step is most commonly the criteria over which the fiercest negotiation takes place between the patent attorney and the patent examiner at approval/rejection time.
What’s in a patent and how is the decision to award it made?
A patent contains an abstract, a description of one embodiment of the idea and what are known as the claims. When an application is made the claims aren’t required. It’s definitely better to leave the wording of claims in professional hands bearing in mind what follows. Claims are key short statements that define what is being claimed as novel and inventive. It is over these that the patent and examiner will negotiate. The examiner will try and water down and make more vague the claims, and your patent attorney the opposite. The claims that are settled on really do determine the value and power of a patent. There are plenty out there that aren’t really worth much because the claims are weak. This of course brings back the critical importance of having a top tier patent attorney on your case.
If this article sparks interest or it is wished to discuss it at all, please don’t hesitate to contact us.