15 Feb 2008
Companies should consider the patent issues before launching a new product, although not all of them do. Tim Hayes asks patent attorney Anna Molony to explain the steps that they should take.
Anna Molony is a UK chartered patent attorney and a European patent and trademark attorney at UK firm Chapman Molony, with a background in physics and optoelectronics. She entered the profession in 1996, after completing her PhD in the Photonics Research Group at Aston University, and was the in-house IP advisor to a photonics start-up company before joining Chapman Molony.
Does the photonics industry present any particular patent issues compared with other industries?
Photonics is a fast-moving sector, more so than mechanical nuts-and-bolts industries, and perhaps faster moving than the patent system was set up to deal with. It can take 18 months for a patent application to be published, and it's entirely likely in photonics that a company will have launched a new product before the patent process has been fully completed.
As a result, although consideration of issues such as trademarking and patent mapping during your product development is important, so is keeping an eye on your competitors' patent activities and being aware of their patent applications as soon as they are published.
How can a company monitor the patents that are being published by its competitors?
We can monitor the patents being published by national intellectual property offices, searching by subject area or in the name of a particular competitor. Companies might file under a different name than their trading name, but with some investigation you can still be aware whenever they publish an application. If you see a patent application that might be a problem in relation to one of your own products and would prefer that the patent didn't proceed, you can monitor the progress of that application and take suitable action. You can either file observations at the patent office, to tell the patent examiner of other relevant prior art, or file an opposition to try and remove the patent in question.
What steps should a company take before a product launch to ensure patent protection?
The best countdown to product launch is:
• Patent mapping before your product even reaches the concept stage, by searching existing patent rights to identify opportunities in a particular sector.
• Following product development, a novelty search to identify whether a new product has patentable features or if its appearance may be registerable as a design. It can be done at any point in the design process, but it will be most useful during initial prototyping when the design still has some flexibility, or at the final design stage when considering whether a patent or design application is to be filed.
• Apply for protection – patent protection for technical features or for a registered design covering the product's appearance.
• Consider the product's brand or trademark. Trademark registration provides the strongest protection for a company's brand and is the most easily enforceable.
• Carry out infringement clearance searching to identify any existing patent, registered design or trademark rights owned by other parties that your product might infringe, within the geographical areas that you intend to manufacture in or sell in.
• After product launch, carry out patent and trademark watches to identify any potential infringement of your rights.
Is there an international dimension to IP protection?
When companies think about their patent protection strategies they should consider where they manufacture, where they do their R&D, what markets they sell to, and perhaps even where their key competitors do their manufacturing and development. Most photonics companies who want to get patent protection seek it in the UK, Germany, France and Italy, plus the US. Filing both European and US patent applications is important if you export to those markets.
What services can companies like yours provide during this process?
We do all the preparing, filing and discussing with the patent offices, but we can also advise companies on which application filing strategy is right for them. Since I have been an in-house patent attorney myself, I appreciate where patents fit in to support a company's business model.
Do companies fully appreciate the importance of patent and IP issues?
The photonics sector is more patent aware than the general business community, although it can always be tempting for a company to overlook the subject in favour of launching a product as rapidly as possible. There needs to be a good reporting structure within the company to ensure that the people who consider filing a patent application, such as the CTO or CFO, actually know about the developments and inventions that their engineers are coming up with. In larger companies the engineers and the sales force can be too far removed from those decisions.
Patents are a commercial tool, not a prize for having a great idea. They have to support a business plan and could even be seen as part of the marketing or R&D strategy. They are certainly a vital part of protecting the investment made in a new product. Not filing patent applications to protect yourself is effectively the same as handing over your R&D investment to your competitors. If you spend £200 k developing a new product, then surely it's worth £10–20 k to ensure patent protection.
• This article originally appeared in the February 2008 issue of Optics & Laser Europe magazine.