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Four new appointments set Albright IP up for a strong 2019

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Albright IP has welcomed four new members of staff to its offices. Following an exceptional year of growth in 2018, the new team members will help to strengthen our offering of professional and cost-effective intellectual property (IP) protection for our clients in the UK and across the globe. Our new employees take the total number of staff up to 26 at our Montpellier headquarters.

 

These new additions to the team are a reflection of our ongoing expansion and will bolster us to meet our clients’ ever-evolving needs. We pride ourselves on providing our clients with a unique combination of IP strategy, patent and trademark services combined with the prototype design/development services offered through our in-house design consultancy, DUKU.

 

Commenting on the new arrivals, Albright IP Managing Director Robert Games said:

 

“These new team members have given us a real boost and we’re delighted to be starting 2019 on such a strong footing. They are already supporting our clients and making their individual contributions to our overall delivery of quality legal advice and practice in all matters relating to Intellectual Property. We look forward to another year of driving and protecting innovation for our clients in the UK and internationally.”

 

Meet the new team members

 

With each of the new additions bringing their own interests and insights to the team, you can find out a little about them here…

 

Christina Chan has joined as Trainee Trade Mark Attorney


Christina joins Albright IP straight from Queen Mary University of London, where she completed an MA in Intellectual Property Law. She is particularly interested in the interplay between Intellectual Property Rights, the right to freedom of expression, and their place in the age of interactive and collaborative online activity, and she brings a fresh enthusiasm to the team.

 

Adrian French has joined as Trainee Patent Attorney


Having completed a BEng in Systems Engineering and an MSc in Advanced Biomedical Engineering from the University of Warwick, Adrian worked as a UK IPO Patent Examiner for 5 years.  He is currently working on his dissertation to complete a LL.M in Intellectual Property Law.  He’ll be training as a patent attorney and will be involved in drafting, filing and general prosecution of patents.

 

Jennifer Pitman has joined as IP Administrator


Jenny holds the Patent Administrator’s qualification awarded by the Chartered Institute of Patent Attorneys (CIPA). She has many years of legal experience, both in the UK and her birthplace of Bermuda, having previously worked in IP with a focus on patents and registered designs, since 2009.

 

Helen Morris has joined as IP Administrator

 

Due to attend the CIPA Administrators’ Course later in the year, Helen will be working with patent and design matters, assisting with initial client enquires, through filing and the various stages of the application process to grant and maintenance.

Overcoming UK Patent Rejections

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PATENT REJECTIONS

Many designers spend months and even years working on a development, only to encounter numerous barriers and hurdles raised by the Patent Office when trying to patent it.

 

In many scenarios, the issue with the patent application is that the claimed concept does not fall within the legal definition of an invention. This is given by Section 1(2) of the Patents Act, which can be summarised as follows:

 

Section 1(2):

  1. Scientific theories/discoveries and mathematical methods are unpatentable
  2. Aesthetic creations (e.g. literature, music and drama) are unpatentable
  3. Rules for games, business methods, schemes and rules, and computer programs are unpatentable
  4. The presentation of information is unpatentable

 

In particular, it is not possible to obtain a patent which is directed purely to an algorithm (clause (a) above); copyright generally covers aesthetic creations (clause (b) above); and clauses (c) and (d) are reasonably self-explanatory.

 

As an aside, a nice ‘presentation of information’ may be protected by a registered design instead.

 

Schemes, Rules and Methods – Applying UK Law

 

It is clause (c) above which often gives applicants the most problem, and is more often than not the reason for refusal of individual applicants’ patent applications. It can be difficult to readily assess what constitutes a method for performing a mental act, playing a game or doing business in particular.

 

The test under UK law is derived from the judgement of the Court of Appeal in Aerotel Ltd v Telco Holdings Ltd and Macrossan’s Application. This judgement provides a four-step test for determining what is excluded subject-matter.

 

The four-step test is as follows:

 

(1) properly construe the claim

 

In other words, what does the claim actually mean, when translated out of legalese?

 

(2) identify the actual (or alleged) contribution

 

In other words, what does the invention do?

 

(3) ask whether it falls solely within the excluded subject matter

 

Is the claim as a whole excluded under the above provisions? In other words, are you outright claiming a computer programme, for instance?

 

(4) check whether the actual (or alleged) contribution is actually technical in nature

 

If the technical features were stripped out of the claim to expose the underlying inventive concept, would the claim then fall into an excluded matter category?

 

In most circumstances, this Aerotel/Macrossan test is used to frame a Patent Examiner’s objections to a particular claim in a patent application.

 

However, we can use the test as a guideline for determining whether an invention is likely to be excluded from patentability before a patent application is filed.

 

For an assessment of whether an idea is excluded from patentability, it is best to walk backwards through the Aerotel/Macrossan test.

 

  • Is there a technical contribution to your idea?

 

This can be a tricky thing to analyse. What makes something ‘technical’? If you are only able to describe the way your idea will work in abstract terms, then there is a risk that any patent claim to the idea will fail the Aerotel/Macrossan test.

 

  • Does the idea fall completely into one of the excluded categories specified in Section 1(2) above?

 

This is most difficult to assess for clause (c) of Section 1(2), where there may be blending between features which are excluded subject-matter, and features which are not.

 

It is always worth attempting to ‘pitch’ your idea to yourself, in a way that encompasses the scope of protection you would want for the idea. If the clever part of your idea is easily categorizable in one of the definitions of Section 1(2), then there are likely to be issues with patentability in due course.

 

  • Properly construe the claim and identify the contribution

 

This requires a claim to have been created which defines the scope of protection which you would like from your patent, and therefore is something that can be addressed by your patent attorney.

 

If you are able to consider the first two points relating to exclusion from patentability under the UK Patents Act, then we can assist with the preparation of suitable claims which should overcome potential excluded subject-matter objections in advance, and/or advise you before applying for a patent whether your idea is likely to face significant obstacles to grant.

 

Applying Aerotel/Macrossan to your invention

 

If you have a pending patent application with a Section 1(2)(c) rejection raised against the claims, what can you do?

 

(1) Recast the claims to highlight the technical matter. Often UK Patent Examiners can attempt to pick apart a claim into component parts which are well-known in order to exclude them from consideration. It’s worth remembering that this is not necessarily the correct approach to take.

 

If the technical components have been combined in a clever way to solve a problem which would otherwise fall within an excluded category, there may be ways to get around the objections.

 

(2) Consider whether the claim category can be changed. If you have claimed a method of doing something, should you instead be claiming the apparatus that performs the method? This may add the technical characteristics which will help you to demonstrate patentability.

 

(3) Is the Examiner correct? Sometimes, objections can be raised which are not completely accurate, for example, if an Examiner has not fully understood the core inventive ‘nugget’ of your idea. Clarifying claims can help in this regard.

 

If you have received an objection to your pending application, then it’s worthwhile consulting with a patent attorney to see how we might be able to help you achieve your goals.

 

For ideas which are still gestating, it would be worth speaking to a patent attorney prior to filing a patent application. Lack of disclosure, and therefore lack of clarity, is a big factor in receiving objections on the grounds of excluded subject matter. We are experienced in writing patent applications with lots of options for fall-back positions, should the invention be more abstract than most. After all, a patent is potentially a twenty-year investment, and therefore it’s worthwhile getting it correct from day one!

 

Financial Compensation for Intellectual Property Infringement

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Damages ac of profits

An intellectual property right is fundamentally a right to prevent competitors from using your brand, invention, design, copyright work, or whatever.  But what if they do?  A rightsholder who successfully sues for infringement will be able to obtain an injunction – a court order preventing the infringement from continuing.  For infringements which have already occurred, there will usually be an entitlement to financial compensation.

Damages or profits?

A successful claimant will be able to choose either to claim damages – compensation for the loss that they have suffered due to the infringement, or an account of profits – the profits wrongfully made by the infringer.  The claimant will obviously want to choose the remedy worth the most, and will normally be able to get an order for disclosure of the defendant’s documents in order to gauge the relative value of each option.

Damages – lost sales

In theory, damages are compensation paid to a rightsholder for the loss caused by the infringing activity.  A certain number of infringing sales will have been made, but a key question is whether all of those infringing sales represent lost sales to the rightsholder.  All sorts of factors will need to be taken into consideration.  As an example, if a counterfeit or pirate product is sold at a much lower price than the original, and customers probably know that they are buying a counterfeit, then it may be very difficult to say that all of those customers would have paid full price for the genuine article if the infringement was not available.  On the other hand, if it is a very good counterfeit and sold at a similar price, so that customers are misled, then each infringing sale probably does represent a lost sale on the part of the rightsholder.

This example of counterfeit goods is relatively straightforward.  In other cases, for example a patent infringement, it may be that nobody is being misled, but a rightsholder might still argue that at least a proportion of the infringing sales represent lost sales on their part.  Evidence for this may end up being a little inexact.  Again, multiple factors will come into it – the price of the product may be an issue; if the infringing product has aesthetic differences then perhaps some customers would not have bought the patent holder’s product just because they did not like it, and so on.  In the end a Judge will have to weigh up all the evidence and come to an approximate view as to how many sales were lost by the rightsholder.

Damages – reasonable royalty

What if a rightsholder can’t prove lost sales for some or all of the infringements?  They are still entitled to a “reasonable royalty”.  This is an amount determined by looking at how much a hypothetical willing licensee in the position of the infringer would have agreed to pay a hypothetical willing licensor in the position of the rightsholder.  Again it is all a bit – well – hypothetical, but relevant evidence might include similar licences in the industry.  For example, in “simple mechanical” patent cases, reasonable royalties often seem to be determined at about 5% of sale price.

Reasonable royalty damages often end up being a small fraction of damages for lost profits, so rightsholders will work hard to try to prove lost profits for as many sales as possible, if they think they can.

Other heads of damage

Any reasonably foreseeable damage caused by the wrongful infringement can in theory be recovered.  Rightsholders may put forward various theories that they have lost out in different ways and need to be compensated.  A few examples include damages for price depression, where a rightsholder claims that infringing activity has forced them to drop their prices; lost sales of “convoyed goods”, i.e. goods not specifically covered by the relevant IP right but which are typically sold alongside and provide additional revenue; and costs incurred in mitigating damage, for example the cost of additional advertising to counteract lost business caused by the infringement.

Moral prejudice and damages for “flagrant” infringement

The Enforcement Directive[1] provides for “non-economic” factors, such as “moral prejudice”.  What is that?  There is relatively little guidance so far, but it probably allows – in principle – damages for “pain and suffering” and “mental distress” caused by an infringement.  English Courts have been rather reluctant to award damages under this head.

In copyright cases, “additional damages” can be awarded for “flagrant” infringement, and these additional damages can be quite valuable.  Additional damages go beyond the compensatory principle and can be well worth claiming.

Account of profits

What about the other option – an account of profits?  In principle, the rightsholder is entitled to the profits which the infringer has made by infringing, most obviously by selling infringing products.  In the first place this is an accounting question – what profits have actually been made by selling this particular infringing product line?  This might be less than straightforward, and there could be disputes over the proper allocation of variable and fixed costs.  Then what about the central overheads of the business? Whether these can be properly deducted can be a contentious issue.  The legal test is (a) whether the overheads would have been incurred anyway even if the infringement had not occurred and (b) whether the sale of infringing products would not have been replaced by the sale of non-infringing products.  In other words, would the same overheads in fact have sustained a non-infringing business if the infringement had not occurred?[2].  What this boils down to is that the rightsholder is entitled to recover the extra profits the infringer made due to their choice to carry out the acts which infringed.

Overall the rightsholder is entitled to the profits due to the infringement, so that may also raise the question as to whether the fact of infringement was really driving the sale of the product – i.e. did the consumer want an infringing product, a product having the particular characteristics protected by the IP right, or did they just want a product of a certain broader category?  If the infringement did not drive the sale then an apportionment may be made so that the rightsholder is only recovering the profits due to the infringement, rather than all of the profits due to sales of the infringing goods.

In some cases what this can mean is that after all this difficult accounting, an account of profits comes down to more or less the same thing as a reasonable royalty, which is the least a rightsholder can expect if they elect to claim damages.  Probably for that reason, damages tends to be the more popular choice.  It does all depend on the circumstances though.

An enquiry into damages or an account of profits is the very last thing that happens in IP litigation.  But it is well worth both parties having a good look at the possible financial implications early in the process, because with a realistic idea of the value of a claim, a swift and agreeable compromise can often be reached, vastly reducing the legal costs of resolving a dispute.  Estimating damages can be complex, but we’ve made a handy flow-chart to help a little bit.  Also, we would obviously be delighted to advise further on your specific case.

[1] EU Directive 2004/48/EC

[2] See Design & Display Ltd v OOO Abbott & anr. [2016] EWCA Civ 95

Albright IP and Duku get to root of the issue for dental client

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Albright IP and sister product design company Duku have helped Harley Street Dentist Phillip Davies and Hygienist Laraine Wright to solve an everyday issue, with the launch of a new patent pending product line called Techsurg.

 

The product, which hit the markets in early 2018, is designed to give dentists and their patients better access to dental accessories, Phillip Davies explains:

 

“The development of the Techsurg product range originally led from finding a smart and hygienic solution to place much needed tissue boxes within easy reach for the customer.  We developed a number of design solutions and prototypes before finalising on a multi-use product, which holds a variety of items attached by a universal strap to the dentist chair.”

 

With a global market worth $7bn leading dentists invest heavily in the latest equipment presenting their customers with a modern, clean and high-tech surgery to attract and retain customers.

 

With Albright IP and Duku’s help we now have a unique product with multiple applications

While there is a large product range for high tech chairs, instruments, x-ray machines and lighting, there was a clear gap in the market for Techsurg, added Laraine Wright: “We knew that there had to be a better solution to using rubber bands to mount tissue boxes, and while it seems a simple problem to have, the adopted solution of rubber bands was undesirable and a poor reflection of the high-tech standards of modern dentistry. With Albright IP and Duku’s help we now have a unique product with multiple applications from tissue boxes to entertainment, delivered in a clean, sleek, more professional way.”

 

Driven by an ageing population and an increase in cosmetic dentistry the UK dentistry market is very competitive. Last year, consumer spending on dentistry reached around £3.8bn, a growth of 12%. With over 12,000 practices in the UK and a lot of consumer choice, dentist practices not only need to deliver the very best customer experience but ensure that they set themselves apart from the competition.

 

Alex Lee, Director at Duku commented “Consumers want their dentistry to be delivered in sleek, stylish and hygienic dentist practices. Surgeries need to be practical and enable dentists to offer the best service and customer experience for their clients.”

 

The solution includes a silicon rubber grip designed to fasten around the different diameter poles common to dentist chairs. This was complemented by a patented twist-release bracket to allow easy attachment of different items.

 

Alex added “Of course, hygiene was a number one priority and our design solution was focused around developing a wipe clean product, using materials that were suitable for washer disinfection.”

 

Securing strong IP rights including patents, registered designs and registered trademarks is an incredibly important step when developing a new product.

 

Robert Games, Managing Director at Albright IP, responsible for securing the IP commented: “Securing strong IP rights including patents, registered designs and registered trademarks is an incredibly important step when developing a new product.  This not only protects it from being copied but instantly builds value in your company which you can leverage for investment.”

 

“While there are thousands of different straps out there, the Techsurg product has unique protectable features. Not only is it protected in numerous countries across the world, but our client Techsurg will be able to benefit from the Patent Box tax incentive with up to a 50% reduction on corporation tax from sales of the patented product.”

 

With patent protection, manufacturing and packaging design in place, the product was put into production through Duku’s manufacturing partners. Today the product range is being sold across the leading Dentist equipment suppliers.

 

For more information on Techsurg go to www.techsurg.co.uk

“Poor Man’s Patent” – Fact or Fiction?

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Poor man's patent

 

Poor Man’s Patent – Fact or Fiction?

 

From time to time the phrase ‘Poor Man’s Patent’ gets thrown around, seeming to imply there is a free or low-cost way of obtaining protection for your invention or idea. Below, we discuss what a ‘poor man’s patent’ actually is, and why it may destroy the chances of you ever commercialising your idea.

 

Postmarked Sealed Envelope

 

A quick internet search reveals that the phrase ‘Poor Man’s Patent’ is most well known in the US.

 

writing your idea down, sealing it in an envelope and posting it to yourself so that the sealed envelope is stamped with the postage date

 

This involves writing your idea down, sealing it in an envelope and posting it to yourself so that the sealed envelope is stamped with the postage date. This was considered third-party verified proof of the date of your invention.

 

If someone else then came up with the same idea subsequently, the postmarked envelope could then be opened with witnesses present, proving that you originated the idea on at least the date of the postmark.

 

This information is still available but is dangerously out of date. If you follow the advice for a ‘poor man’s patent’ these days, you will potentially irrevocably destroy your chance of obtaining a valid patent later on, and therefore destroy your chances of monetising your invention. It is that critical.

 

In the US before 2013 the above strategy could, in theory, give you the right to a patent to the idea, even if someone had already filed their own patent application to the idea first.

 

At that time, the US was a ‘First to Invent” patenting system’ Therefore, proving when you had the idea first was as important if not more so than filing the patent application to lay claim to the concept.

 

The US has since changed to a ‘First Inventor to File’ patenting system in line with the majority of the rest of the world, Sealed envelopes containing your ideas on paper as explained above now count for little or nothing in all the major patenting systems worldwide. And, in fact, using the ‘poor man’s patent’ approach will these days do more to harm you protecting your idea then it will help you.

 

Copyright

 

Having said that, the ‘sealed envelope technique’ is still relevant for Copyright purposes. For example, it can help to prove when you came up with a drawing or a work of literature before a certain date, if someone has copied you.

 

Registered Design

 

A registered design (also called a ‘design patent’ in some territories, such as the US) protects the appearance of a product.

 

Therefore, if someone copies the ‘look’ of your product and you have a registered design or design patent, you can enforce your rights against them.

A registered design is nearly always cheaper to obtain than a patent

 

A registered design is nearly always cheaper to obtain than a patent (unless you have multiple products that all look slightly different but work in the same way), so it may be considered a “Poor Man’s Patent”.

 

Having said that designs do not protect the way a product works. Designs rights do not protect the ‘technical concept’ of an idea – that is for a patent. Therefore, if someone makes a product which does exactly the same thing as your product, but has a different exterior ‘look’ to it, your registered design will not protect it.

 

Registered designs are more useful in addition to a patent, or if it looks new but the concept is well known.

 

DIY “Provisional” Patent Application

 

A DIY “provisional” patent application could also be considered to be a Poor Man’s Patent.

 

A DIY “provisional” patent application could also be considered to be a Poor Man’s Patent

This is effectively where you write down the details of your invention and file it at the patent office but don’t file claims, and potentially some other required parts with it.

 

Before the first anniversary of the filing date, you can have a professional write claims for it and complete the application, hopefully once the business has taken off and you now have more funds.

 

There are many dangers to this approach. Some are outlined in our earlier article here. But, in essence, you can only use the original date of filing for the matter you originally filed. If the new claims that you add downstream need additional matter to word them effectively, then this new or added matter would potentially be invalid if you had sold the product or disclosed details of it before filing the new claims (such as marketing the idea to investors, setting up a website to promote the idea, or putting a Kickstarter funding proposal together to raise funds).

 

Conclusion

 

Professionally patenting your invention may, on first appearance, appear to be an expensive business. But, if you are serious about protecting your idea, a professionally drafted patent application is the only way to go.

Cutting corners in the early stages of an idea or business can seem attractive, but it will likely cost more in the long run to fix the mess you might end up in.

We often see clients that have deals on the table, but have jeopardised themselves by not investing in their patent and trade mark rights at the beginning, leading to significant issues completing the deal they have worked so hard to arrange.

In short, do not use the ‘poor man’s patent’ approach. These days, it is worse than useless. Do it properly or do not do it at all. Treat patenting and trade marking as an investment; ask questions of your professional legal advisor, and make an informed decision before you disclose your ideas.

 

Accelerating your patent, utility model or design application in China

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Until recently, it was typically difficult for a non-Chinese applicant to accelerate a patent application, due to the requirement of submitting a request form sealed by a provincial Chinese IP Bureau the applicant is resident in. However, as of 1st August 2017, the Chinese Patent Office has not only extended the possibility of acceleration to design and utility model applications as well as patent applications, but it is now theoretically possible for non-Chinese applicants to take advantage of acceleration. But what are the advantages of requesting acceleration and what criteria do you have to meet to accelerate your application?

 

The Chinese consumer market is the world’s second largest, behind only the US

China, sometimes referred to as ‘Factory Asia’, reportedly made almost half of the world’s goods in 2015. The Chinese consumer market is the world’s second largest, behind only the US. With such impressive statistics, increasing number of companies outside of China see IP protection in China as an important part of their IP strategies. Although IP right infringements are known to be an issue, the Chinese government has started to encourage usage of inventions and commercialisation, as well as improving IP law enforcement and protection. Accelerating the application process to obtain protection as soon as possible is sometimes advantageous and necessary.

 

To request acceleration of your Chinese patent, utility model or design applications, one of the following criteria needs to be met:

 

  1. The invention relates to one of the following fields: environmentally friendly technology, a new generation of information technology, biology, high-end equipment manufacturing, new energy, new material, new-energy vehicle, intelligent manufacturing, the internet, big data, cloud computing;
  2. The applicant has completed preparation for implementing the invention, has begun preparation or has evidence of a third party implementing the invention;
  3. The Chinese application being the first filing, and a corresponding application in a foreign jurisdiction has been filed claiming priority to the Chinese application;
  4. The invention is of significant importance to the Chinese state and public interest.

 

Furthermore, the patent application will need to have entered the substantive examination stage, and the utility model/design application will need to have been accepted as an application with the necessary official fees paid. It is further required to provide any known relevant prior art documents to the Chinese Patent Office when submitting the acceleration request.

 

The patent application will need to have entered substantive examination stage

 

If you do wish to obtain patent/utility model/design protection as soon as possible in China, but your invention does neither relate to one of the relevant technological fields nor have you begun preparing implementation of the invention, then you can opt for first filing in China and then filing in a second jurisdiction, straight away claiming priority to the Chinese application.

 

An important point to note is that, based on our practice experience, an application in Hong Kong, Macau or Taiwan is not considered to meet the criteria of point 4 above. However, an international or regional application, such as a European patent/design application, an International PCT patent application or an International Hague design application, would be acceptable.

 

Therefore, when considering filing strategies and before filing any applications, it is imperative to consider if obtaining protection early in China is important and the most appropriate route to take to request acceleration in China.

 

If you already have a Chinese patent application pending but none of the above criteria are met, it may still be possible to accelerate your application via the Patent Prosecution Highway (PPH) programme if you have a corresponding application deemed allowable in one of the approved jurisdictions.

 

Please do not hesitate to contact one of our patent attorneys if you would like further advice on accelerating your Chinese application in China.

 

Last-chance saloon: Patent Office refused your invention? What are you to do?

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Just imagine: you have spent years working on a brilliant idea which will make your fortune, only to find that four or five years down the line, the scrooges at the Patent Office refuse to acknowledge the patentability of your invention. What are you to do? Whilst the obvious answer would be to hire a handsome patent attorney to solve the problem and put the application into order, there is always the alternative of a trip to Newport to put your case before a Hearing Officer.

 

The decisions of the Hearing Officers can be found on the IPO website, and at times read like a Dickensian barrage of misery as applicants attempt to explain how their circumstances should permit exception to the statutory requirements of the UK Patents Act. However, almost without exception, the result is the same as the Hearing Officer summarises the outcome:

 

The application was refused.

 

In many scenarios, the issue with the application is that the claimed concept does not fall within the definition of an invention, as laid out in section 1(2) of the Act:

 

1(2). It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of –

 

  • a discovery, scientific theory or mathematical method;
  • a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
  • a scheme, rule or method for performing a method act, playing a game or doing business, or a program for a computer;
  • the presentation of information;

 

but the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such.

 

It is sub-section (c) which often gives applicants the most grief of these, as it can be difficult to readily assess what constitutes a method for performing a mental act, playing a game or doing business in particular.

 

The test under UK law, and as is usually wielded with impunity during oral hearings, is that derived from the judgement of the Court of Appeal in Aerotel Ltd v Telco Holdings Ltd and Macrossan’s Application, which provides the four step test for determination of excluded subject-matter:

 

  • properly construe the claim
  • identify the actual (or alleged contribution)
  • ask whether it falls solely within the excluded subject matter
  • check whether the actual (or alleged) contribution is actually technical in nature

 

In most circumstances, the Aerotel/Macrossan test is used in anger, being used to frame a Patent Examiner’s objections to a particular claim. However, we can use the test as a guideline for determining whether an invention is likely to be excluded from patentability before a patent application is filed.

 

Exclusion Zone

 

For an assessment of whether an idea is excluded from patentability, it is best to walk backwards through the Aerotel/Macrossan test.

 

  • Is there a technical contribution to your idea?

 

This can be a tricky thing to analyse. What makes something ‘technical’? The way to look at this is to assess whether you have any idea as to how your idea might be implemented in practice. If you are only able to describe the way your idea will work in abstract terms, then there is a risk that any patent claim to the idea will fail the Aerotel/Macrossan test.

 

  • Does the idea fall completely into one of the excluded categories specified in section 1(2)?

 

This is most difficult to assess for section 1(2)(c), where there may be blending between features which are excluded subject-matter, and features which are not. It is always worth attempting to ‘pitch’ your idea to yourself, in a way that encompasses the scope of protection you would want for the idea. If the clever part of your idea is easily categorizable in one of the definitions of section 1(2), then there are likely to be issues with patentability in due course.

 

  • Properly construe the claim and identify the contribution

 

This requires a claim to have been created which defines the scope of protection which you would like from your patent, and therefore is something that can be addressed by your patent attorney.

 

If you are able to consider the first two points relating to exclusion from patentability under the UK Patents Act, then we can assist with the preparation of suitable claims which hopefully will put you in as good a position as possible to anticipate and overcome potential excluded subject-matter objections in advance, and/or advise you before applying for a patent whether your idea is likely to face significant obstacles to grant.

4 Ways to Fund your Business

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We are often asked if there are options to help fund the growth of a business. If you innovate, then the answer is yes!

 

Let’s take a look at some of the options:

 

1. R&D tax credits

 

Research and Development credits (cash back associated with the tax paid on development work!) are available in a surprising number of countries now, almost 20 at the time of this writing, including Austria, Belgium, Canada, Denmark, France, Ireland, The Netherlands, Spain, UK and even the USA.

 

These are claimable even if you are recording losses, but are still innovating or developing new products.

 

Technological uncertainty? Use R&D tax credits for easy cashback!

 

The main criteria to qualify is quite straightforward – do you have any ‘technological uncertainty’ in your work? This is an extremely wide ranging criteria, and can apply, for example, to law firms developing in-house software to help with their internal processes, and to engineering firms taking new orders that require an iteration or two before the final product is ready to be mass-produced.

 

We talk to many engineering firms and software houses in particular which do not realise that they can make these claims.

 

And, are the claims difficult? Not really.

 

If you do not have the time to do the claim yourself, don’t rely on your accountant! For the first time, use someone with a technical (engineering or science) background who will work on a ‘no win/no fee’ basis.

 

With a technical background (which is the last thing an accountant has!), he or she will be able to drill down into the detail of your work to maximise your claim.

 

It can also be back-dated a couple of years.

 

And, it can be claimed annually.

 

After the first claim, if you then feel that you want to handle it yourself, you can crib the first claim.

 

Please feel free to ask for more information regarding these R&D tax claims, they are really are a no brainer to help fund your business growth.

 

2. Patent Box

 

 

The ‘patent box’ is still a relatively well-kept secret. For some reason, accountants still do not seem to be telling their innovative clients about this potentially lucrative tax reduction scheme.

 

In short, if you create an innovate product which is patented in at least one qualifying country, you can then claim 50% of your corporation tax back on worldwide sales of that part.

 

And, even better, if the patented item forms part of a larger product, the 50% corporation tax cut can be applied to the entire larger product!

 

For example, if BMW creates an improved air intake for the engines of their cars, and successfully patents it, then they can apply for a 50% company tax rebate on the entire vehicle that the air intake is used on.

 

And, better still, the tax cut is for worldwide sales of those BMW vehicles.

 

Patent Box gives a 50% company tax cut!

Similarly to the R&D tax credits above, nearly 20 countries currently operate a Patent Box system or similar.

 

But, isn’t patenting something difficult and long winded?

 

Not necessarily, if you use some strategy!

 

With your patent attorney, by understanding what you actually want to achieve, he or she can tailor the patent specification to limit the likelihood of objections.

 

And, particularly in the UK, it is simple to accelerate the patenting procedure. The quickest I have had a patent granted to date is 7 months from first filing.

 

Please feel free to ask for more information, if this is of interest.

 

3. Kickstarter

 

 

This is popular peer-to-peer funding platform that many have now heard of. There are also plenty of copycat platforms providing a similar format. 

 

With Kickstarter, you prepare your pitch to show the public your idea, the prototype, and the envisaged final product, and in return, the public can ‘pre-purchase’ the product before it’s actually ready. This pre-purchase funding then allows the creator to fund the actual building of the product.

 

So, what are the issues?

 

Firstly, many of the people who choose to fund a cool innovation do not realise that it is an investment, and not a sure fire purchase. As we well know from the various stock exchanges around the world, investments may decrease. It is a gamble. And Kickstarter is no exception. Many of the projects do not come to fruition or do not meet the minimum finding level required to release the capital to the creator.

 

ask the public to fund your idea by pre-purchasing

Secondly, a main reason that creators do not succeed in meeting their funding targets is that they do not know how to market their idea.

 

This is where a company called Funded.Today (www.funded.today) comes to the rescue. Although they will take a whopping 35% of the finally pledged amount, their expertise is in leveraging social media so that your Kickstarter pitch gains the traction that it needs. With that exposure, you are more likely to achieve and surpass the funding that you need.

 

Funded.Today has raised nearly $200 million at the time of writing, so they are definitely on to something.

 

Just remember, you need to have decided whether or not to patent your idea, and to have patent pending status for your creation if you are going to protect it, before you go live on Kickstarter. Follow this general rule of thumb, and you will not go far wrong. This is critical in most parts of the world.

 

4. Equity Release

 

Finally, let’s look at equity release.

 

Some banks (or their subsidiaries) are now able to take ownership of your intellectual property as security on a loan. Effectively, you are releasing equity in your patents and trademarks.

 

This is an interesting concept, and if you already have a patent portfolio plus are active in developing product, it is a potentially easy way to access relatively short term funding.

 

a short-term swap of your patents in return for a loan

Lombard Technology Services, for example, will base a loan on your R&D tax credit claims (see number 1 above) along with taking ownership of your intellectual property. Once the loan is repaid after an agreed, typically three to four years, period with a small amount of interest, the IP (patents, trademarks, designs, etc) rights are re-transferred back into your ownership.

 

Please feel free to ask for any further advice regarding any of the above options, plus other options that may be available dependent on your circumstances. Our passion is to see you succeed.

Cambodia to recognise Chinese patents

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China Flag

Not too long ago, Cambodia became a ‘validation state’ for the European Patent Convention (discussed here). This gives the option to extend a European patent into Cambodia.

 

Now Cambodia has introduced another change: a registration-style system based on Chinese patents. This effectively means that if you get a granted Chinese patent, you can apply to receive a corresponding patent in Cambodia without going through a separate examination process.

 

How will the patent registration system work?

 

The registration process effectively requires evidence of the Chinese patent (certified copy of the Chinese patent and patent register entry), and a Khmer translation of the whole patent, along with the relevant forms and fees.

 

Interestingly, the Cambodian system is set up in a way that allows patent protection to be established retroactively. If you have a granted (and in force) Chinese patent that was filed after 22nd January 2003, then you can obtain patent protection in Cambodia. It doesn’t appear that there is any fixed period for doing this.

 

Importantly, other parties who are already using the invention in Cambodia (or have made serious and effective preparations to do so) will be protected from patent infringement. They will be able to continue to do what they were already doing or going to do, assuming they are acting in good faith. In other words, you can’t register your patent now to stop existing dealings, only dealings that begin after your Cambodian patent enters into force.

 

Will other countries follow suit?

 

The Cambodian patent registration system isn’t the first of its kind. A good number of patent offices already place serious weight on the opinions of the major established patent offices in Europe, China and the USA, for example, and it makes sense not to duplicate effort in re-examining the same material.

 

For example, various patent offices (e.g. in Singapore, Indonesia) offer streamlined examination based on the work of other major patent offices, and there is also the PPH (Patent Prosecution Highway) system, although this does not guarantee grant, unlike a registration system.

 

The Hong Kong Patent Office runs a registration system for UK or Chinese patents, but that is a two-stage system which often requires you to file before you know whether you will obtain a patent. The Cambodian system doesn’t require such a gamble – you can apply after receiving a granted Chinese patent. In a similar way, it is also possible to register a granted British patent in various other overseas territories after grant, although this is generally limited to former or existing Commonwealth territories.

 

It is entirely feasible that other countries could start to implement similar registration systems, to avoid the costs of growing their existing patent infrastructure and/or to encourage investment from international businesses. The number of patent applications being filed around the world is increasing year on year, and removing barriers to patenting via registration systems would seem to present an attractive option for encouraging foreign companies to patent and invest in local operations.

 

Albright IP Brexit update: May 2018

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The United Kingdom is scheduled to leave the European Union on the 29 March 2019. Whilst the precise terms of exit are yet to be agreed, in March 2018, the European Commission and the UK published the first draft of a Withdrawal Agreement. This is the most comprehensive document to date, although each of the proposals are open to further revision.

 

The Withdrawal Agreement touches on the post-Brexit administration and scope of EU intellectual property rights, including EU Trade Marks (EUTMs) and Registered Community Designs (RCDs).

 

The proposed Transition Period:

 

The Withdrawal Agreement provides that the transition period will end on 31 December 2020. It is envisaged that during the transition period i.e. from 29 March 2019 to 31 December 2020, the applicable European Union law will still be effective in the United Kingdom. Consequently, EUTM and RCD rights will continue to be valid and enforceable in the United Kingdom until at least 31 December 2020.

 

In addition, UK IP practitioners will retain their rights of representation before the European Intellectual Property Office (EUIPO) until at least 31 December 2020.

 

Points of agreement:

 

In terms of existing EU intellectual property rights, both sides have voiced the intention to create equivalent “cloned” UK rights, with the same filing, and priority dates and with no examination required. The proviso is that the rights in question are granted or registered before the end of the prescribed transition period.

 

“The holder of any of the following intellectual property rights [EUTMs/RCDs/Plant Variety rights] which have been registered or granted before the end of the transition period shall, without any re-examination, become the holder of a comparable registered and enforceable intellectual property right in the United Kingdom, as provided for by the law of the United Kingdom.”

 

Points of uncertainty:



What currently remains unclear, is the administrative procedures that will be put in place to transform and/or extend EU IP rights by the end of the transition period.

 

For trade mark rights that are pending at the end of the transition period, the owners will be allowed nine months to request a transfer and re-examination to the UK IPO, in order to retain the original filing and/or priority dates. This is very likely to incur an additional fee, and an inevitable delay in protection being granted.

 

A separate issue also to be addressed is the entitlement to representation at the EUIPO for UK practitioners, in a manner that will give reassurance to UK based rights-holders that they can continue to trust in the professional relationships that have been established.

 

The draft agreement remains silent in respect of unregistered designs. At present, the UKUDR is not a comparable replacement for the European UCD.

 

Summary:



For IP rights holders, as the months towards Brexit and the end of transition pass, seeking to secure separate UK and EU trade mark and design protection from the outset, is recommended. Whilst there are some reassurances that granted rights will be ‘cloned’, there is currently no parallel comfort being offered for pending applications.

 

Whatever the outcome of the Brexit negotiations, Albright IP will continue to offer expert advice to our clients, and we will be moving forward and adapting our practice, to ensure that the most comprehensive and cost-efficient IP protection is put in place in the UK and the European Union.

 

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