IP Insights - a Q&A with Dr Edward Cavanna
Like all patent attorneys, I started my career with a science degree, in my case physics. I followed this with a PhD, but found that the academic life wasn’t really for me and upon completion left to find a job that keeps my science skills sharp, but which allowed me to bring other aspects into play. I think this is quite a common trait among patent attorneys – we all love learning about the inventions which people have made, and then weaving that into a strong narrative to explain the advantages of the invention. Of course, the inventors themselves are often fascinating and this job is often as much about building a strong relationship of trust as it is about demonstrating technical or legal prowess.
The client side is particularly interesting because I work with a wide range of clients, everyone from huge multinational corporations down to a single inventor with a good idea. The way in which I interact with this range of clients is as varied as the clients themselves, ranging from in-depth legal discussions with qualified in-house counsel down to having to explain the fundamentals of IP law from the ground up.
Fortunately, this is an aspect which I greatly enjoy and I believe that I add value to the process in providing a thorough and rounded discussion of the issues (I hope that my clients agree!) In any case, I am always happy to take the time to make sure that people are up to speed with the decisions that we make and the reasoning behind them Working with LUMA-iD usually falls at the end of the scale with more inexperienced inventors. In many way this is more interesting work as you approach the situation from the very first steps, and the inventors have a real passion for moving forward.
Of course it is also much more pressured because you are aware that this is often personal savings being spent on the work and the stakes are often higher as the initial work in protecting the IP really lays the groundwork for the company which they are aiming to start or develop. We’ve all seen the response on Dragon’s Den, as an example, when a presenter admits that they don’t have IP in place. Mark and I have developed an efficient procedure for starting the process with LUMA-iD’s clients. Initially we chat briefly over email and set up a call where I talk them through the options, the costs and how I see the process moving forward. At that point we make a decision on whether and how to proceed and the journey begins. I much prefer honesty at this stage over trawling for work at all costs. Frankly, it’s no fun pursuing a case that has no hope of grant and I’d much rather persuade someone not to spend their money if it seems like it would be unlikely to be worth the investment.
Mathys & Squire works across all forms of IP – I personally work on patents in the physics space (everything from software and electronics, to materials science, mechanical devices and medical devices) as well as registered design work. We can also advise on copyright issues, trade secrets, trade marks and plant breeder’s rights, as well as having strong biotech and chemistry teams for the patent work. We can advise on various aspects of the IP process including on adjacent parts of law.
This begins with the initial work in advising on the prospects for a given invention, through drafting and filing applications in the UK, Europe, and further afield, navigating laws in various jurisdictions to achieve grant (known as prosecution of the application), and on to valuation, licensing, preparation of NDAs, and enforcement. We can of course also act on the other side of things either responding to allegations of infringement of IP owned by others, acting to revoke or limit others’ IP and so forth. It’s worth noting that patent (and trade mark) attorneys have a separate qualification route from solicitors. This means that while we are the only people you should trust to write, prosecute and defend patent applications for you since our training is directly tailored to this, we are limited on the extent to which we can advise on issues which are not directly related to IP issues. I have worked here for eight years now, along with two years prior to that at another top tier IP law firm.
Over this time I have been involved with a hundreds of cases, and typically have at least 50 active cases running concurrently at any given time. In part because I am happy to advise that we don’t proceed if that would be appropriate, I generally have a high grant rate, This is not the end of the road, of course, and there is usually a larger strategic discussion to be had to provide the most appropriate protection, tailored to the needs of the particular client.
We live in a world where production of objects is increasingly available to all. Indeed to give an example at an extreme end of the scale, 3D printing now allows people to fabricate in the comfort of their own homes. This is an unprecedented phase in society and it means that there is increasingly little to physically prevent competitors from cheaply recreating physical objects. This problem has long existed in the field of software and copyright as seen ranging from copying magnetic tapes (audio and video) in the 80s and 90s into mass internet streaming from the late 90s up to today. As any developer or designer knows, the bulk of the work goes into the process for creating prototypes, testing, refinement and so forth. It is only at that stage that you have a strong marketable product and have likely invested a decent sum to arrive there.
As noted above, this is also the stage where a competitor can easily swoop in and copy the product exactly with little effort. Since such copying is practically impossible to prevent physically, it is imperative that strong enforceable IP is already in play by the time that you launch. Whether this is in the form of patent pending status (effectively a “keep off the grass” sign to show that you are taking things seriously), a granted patent to protect the functional aspects of the technology, or even a registered design to cover the value that is increasingly placed on the look and feel of your product. This applies especially in cases where the ultimate goal is not to produce the product yourself, but to sell to a large manufacturer. When talking to the manufacturer, it is hopefully intuitive that the huge power imbalance means that without IP on the table there is little that can be done to ensure that a fair price is agreed for the licensing or acquisition of the rights to produce the product.
There are four categories of IP which we deal with regularly, each with different considerations. My advice to clients naturally includes preparing a holistic summary of the options available, tailored to their specific needs. These are:
Patents – used to protect the functional aspects of the work. Usually this protection is independent of how the product looks (unless that is critical to its operation), but focus instead on how it works. These are generally regarded as the strongest form of IP available as they undergo rigorous examination by patent offices in whichever countries around the world in which protection is sought. In addition, because they focus on functionality, they can be used to shut down products which look nothing like the invention but which nevertheless operate in a similar manner. The downside here is that they can be slow and costly to obtain, particularly where the examiner raises multiple issues and we have to fight hard to obtain grant. Protection lasts for 20 years from filing, so the delay in getting to grant can be off-putting as up to that point only the provisional protection of “patent pending” status is available.
Designs – used to protect the look and feel of a product. Note that this expressly excludes functionality, so will not protect you against competitors who create a product which works in the same way but looks different. These are much quicker to obtain (a few weeks to a few months) and significantly cheaper so can provide a good first step to gain enforceable rights. Designs can either be formally registered which requires payment of official fees, and formally filing representations of the device, leading to up to 25 years of protection. Alternatively, unregistered designs also exist as a sort of offshoot of copyright. This lasts for a shorter period, but does not need registration. Usually it is easier to enforce registered designs than unregistered ones.
Trade marks – used to protect branding of the product. This is a good way to gain a strong market position by becoming the go-to name in the industry for the product. Trade marks also can last indefinitely, as long as they are used continuously. Trade marks also have a registered and an unregistered variant (incidentally this is the difference between the ® (registered) and ™ (unregistered) symbols that people are likely familiar with), with the registered variant providing a stronger position against infringers.
Copyright – used to protect any written, visual, audio or other artistic creation. Note that even things like software or rules for playing a game can in principle attract copyright, so long as it represents the creative choices of the author. Copyright lasts for 70 years after the death of the author, so leads to long protection times, but requires one to prove that an infringer actually copied the work, rather than e.g. independently creating it. This is why Ed Sheeran now records all of his studio sessions, for example.
Of course, most products will include many or even all of these aspects.
Consider a can of Coca-cola for example – the ring pull mechanism may be patented, the look and feel of the decoration on the can may be registered as a design, there is branding on the can to identify the producer and serve as a guarantee of the origins of the product and a badge of quality, while other aspects of the printing on the can may attract copyright. In addition, of course, the recipe itself is a famously protected trade secret. A large part of the job, particularly when foundational work with clients new to the IP game is to advise on the best strategy for protecting the product via a hybrid portfolio incorporating these various rights.
How do you protect clients’ patents against infringement?
Policing infringement usually lands fairly squarely on the shoulders of the right holder. This is because infringement is a civil issue, so it is up to the injured party to monitor the marketplace and take action to enforce their rights. This makes sense as it is people working in any given industry are best placed to know what’s going on in that industry.
That said, once a right holder identified what they suspect is an infringement, it is important that they contact a qualified attorney. Quite apart from it being useful to have someone without direct skin in the game to enter discussions on your behalf (so that decisions are as logical as possible, rather than emotional) there are certain procedures to be followed in alerting infringers to your position.
There can be very negative consequences to not abiding by these. It is extremely rare for litigation to be the preferred option in resolving infringement issues, although this is something we handle. Litigation suffers from very high costs (in the millions is not uncommon), and the outcome can be uncertain and take many years to settle. One can expect an infringer’s response to include arguments along the lines of “we don’t infringe and anyway your patent is invalid”. If the judge agrees with the latter point, the patent may be limited in scope or revoked entirely, so this is certainly not a risk-free option. In addition, as the case develops, it may become clear to the infringer that adaptations to their product may take it outside the scope of the patent.
Usually the procedure starts with a strongly worded letter, which may be enough to alert an infringer to the situation (often where they weren’t previously aware of the IP rights). As the process continues, there are various escalations which are possible, through negotiation, and mediation, possibly including the infringer taking a licence at an agreed rate, before we find ourselves with only litigation on the table.
IP Product Design questions;
How do you prevent others from copying or infringing your IP in your product design? ·
As above, this is a case of remaining vigilant to identify infringements and take action. One thing to note is that a positive aspect of litigation is having won a court case can provide a very strong position, since a patent which has survived litigation is extremely likely to be valid, and the scope of protection reasonably clear.
How long does it take to get a patent?
Timings vary hugely with complexity and strength of the invention. My record (for a LUMA-iD client, as it happens) is gaining grant approval in 6 weeks from filing. Typically, 2 to 3 years is more to be expected, with extremely complex cases rumbling on for a decade of discussions. The UK and European patent offices have each recently enacted measures to try to ensure that cases are handled as quickly as possible, with more than 5 years being unusual these days. In fact, the UK legislation effectively forces a final decision one way or the other within 4 years and 6 months.
How do you simplify and explain complicated legal concepts to clients?
This is certainly one of the more challenging aspects of the job, since there are infinite rabbit holes to go down. It’s always a balance between giving enough information for the client to make an informed decision, without drowning them in detail. Usually any given situation boils down to (after a lot of thought at my end, of course) two or three options, each with pros and cons depending on the client’s preferences and situation. I’d say then, that the complex legal situation is largely hidden from the client when this process works properly. What is presented to them is the options and the considerations underpinning them (including e.g. what is the impact on the future of the case or their portfolio) – after all, clients don’t usually want to know what the law says (that’s why they hire me), they care about the options and limitations that are on the table to move things forward. I’m always happy to go into the law where necessary, but if someone has insisted, then I tend to not try to simplify too much as this often sacrifices precision.
Advice from working in the industry When is the best time to apply for a patent / conduct the searches?
Usually, it’s worth getting the ball rolling as soon as possible. By that I mean that as soon as you know how you are solving the problem you have set out to, get in touch with an attorney and talk the case through. I’m always happy to give half an hour or an hour (for free) at the start of the process to discuss where the project is, what else I would need, what I recommend regarding developments and so forth. There’s no harm in starting the project too early, but inventors can get frustrated if they start too late and the time to draft and file the application gets in the way of other aspects of the process (product development and testing, speaking to investors, etc.)
In terms of searching, it is possible to commission a pre-filing search reasonably cheaply to see the lay of the land before we start. Usually, the inventor has a reasonably good idea of what is already out there, and I’m happy to draft the application partly in the dark, so to speak. Generally, with some in-depth research by the inventor, trying their hardest to find something knockout of course, we can be fairly confident that we can write an application directed to features which will result in valid protection with usefully broad protection. In addition, where a search does throw up something potentially problematic, we shift our focus to a new collection of features.
In principle we should then commission a new search to those features and on the cycle goes. All in all, the net result is to find lots of documents to be worried about, without necessarily making any progress, but spending a good chunk of money. Remember that the search doesn’t necessarily identify documents which matter, as ultimately it is the patent examiner’s opinion which will determine whether any given disclosure is prejudicial to grant. Since searches add additional preparation time onto the process, it’s worth also thinking early about getting a search performed, if that is of interest. Certainly it would help me in an initial chat to know what has been found to be the closest known idea, even if this is the result of informal searching by the inventor.
Note that this advice works primarily for patents. For designs, usually the final look and feel of the product will be one of the last things to be settled on, so generally I recommend coming to this later in the process to avoid filing for IP which will never be used.
Documenting a project as a design ideas evolves?
This is usually quite a useful idea, but not essential. My job is essentially to persuade an examiner not only that an idea is new, but that it is non-obvious (or “inventive” in patent language). Markers for inventiveness come in many flavours, but often (particularly for seemingly trivial ideas), a useful thread to pull on is to get under the skin of the issues that the inventor faced along the way. Things were arranged in such and such a way because this helps achieve some useful effect. In cases where other arrangements were tried and, while they seemed promising, led to suboptimal results, this can help get a marginal case over the line.
Another point to make is that inventors, and particularly inexperienced ones, can get overexcited and start telling people about their ideas before a patent has been filed. Formally, this is very bad news as it can be used to demonstrate that the idea was not new at the time of filing. A slight subtlety in this is that developments to the project are not normally captured in the original filing and continued vigilance is therefore required. Two main points here are (1) that inventors should be very careful about talking to anyone without running it past their attorney, and (2) that it may be necessary to consider filing additional applications to top up the protection and free the inventor to discuss the entirety of their work. As attorneys we are well-seasoned in advising on how best to proceed in such circumstances.
The potential value of a patent?
This is a very tricky question to answer in terms of a set cash value. For young and small companies, their initial few pieces of IP are really the foundation of the company and will form a large part of the value of that company in the form of locked in potential for earning. As the company grows, this value shrinks in relative terms, but will remain a substantial part of their worth, especially if further IP is generated as the company/product matures.
A large number of factors will need to be taken into account to give a valuation such as: technical field, status of competitors, stage of development of the product, and so on. Remember that in order to exchange a patent for actual money (through e.g. licensing or sale), you rely on another party wanting to actually buy it. You can also use a patent as property against which to secure a loan, exactly like a mortgage, although the amount you can borrow, and on what terms, will of course depend on a similar assessment of worth. Even more nebulous is the abstract value which you yourself place on the monopolistic position afforded by a patent. Rather than go into this too much here, perhaps this is a good place to mention that Mathys & Squire has a valuations team as part of the business who are able to give a nuanced view on the valuation and commercialisation side of things.
Any tips or advice from working in the industry to date?
I know that this will sound self-serving, but one of the most frustrating situations I find is someone who has tried to write their own application, finds themselves in hot water, and asks us in to try to sort it all out. Usually there is not much we can do to get things back on track as deadlines have often passed to file documents in the form they should have been filed. I have seen more than one person lose valuable foundation IP for their business by taking this route. Other aspects, some of which I have touched on above, include:
Secrecy – It is imperative that you keep the invention secret, i.e. not known to anyone outside the development team and their IP advisors, until the patent has been filed. Failure to do so can render the entire process dead in the water.
Timing – Start the process as early as possible. Not only does this reduce the risk of an accidental disclosure being made, but it makes it more likely that you, and not your competitors, will get their patent filed first.
Engagement – Only by taking the process seriously can you reap the best rewards. This means getting a professional advisor in first (do feel free to shop around and scope out the options), being prepared to pay a sensible amount for the advice, and making sure that there is a strategy in place to capture, register and enforce your rights.
Geographical extent – All IP is territorial, so if you want protection in a given country you need to register it there. This means that you should have some idea from the outset of where you want to file. This can be based on where you expect to manufacture, sell, licence, etc. the IP. Also consider key freight hubs such as Singapore, the Netherlands, etc. On the one hand protecting in many places is obvious advantageous, on the other hand, very few people have the budget to protect the IP in every country in the world so a strategic decision must be made. This is something we are of course always happy to discuss.
Monetisation – I think many people view a patent as a badge of honour, and forget that its true purpose is a commercial tool. As noted above, no one will be checking for infringements if you don’t. It is important at the outset that you can make a strong business case that the money you invest in obtaining IP rights is money well spent. IP rights in general, and patents in particular, can be extremely valuable, but this comes down to how you plan to monetise them. A robust strategy for licensing, for example, requires looking into who will actually license the rights from you, and how much you can expect to gain. If you want to leverage the monopoly instead, that’s fine, but you also need to think about how you will produce and sell the product in sufficient quantity to recoup the investment.
A massive thank you to Edward Cavanna for providing such thoughtful and detailed replies to our questions, we hope this has been a useful Q&A for anyone looking into getting their product design IP protected. We always enjoy working with Edward and his team and excited to share a few projects shortly that we have been working on.
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