Keeping Intellectual Property in mind during COVID-19, featuring Forresters

Black Country Growth Hub: In Conversation

This week Dan Carins, Productivity Lead at BCGH, approached Jagvir Purewal who is a patent attorney at Forresters to discuss the importance of Intellectual Property.

You can watch the full discussion below or you can read a bitesize version in the form of a blog post below:

Dan started by stating that lots of companies in the Black Country are responding to calls to supply goods and/or services in response to COVID-19, such as responding to the ventilator challenge, Nightingale Hospital or providing PPE to the NHS.

We then asked ‘because of the urgency, companies are providing goods or services very quickly, at cost, and under very difficult circumstances due to guidance around social distancing or the closure of their own suppliers – what things from your perspective as an IP specialist, should companies think about?

Jagvir said:

It's almost every day, we hear of a new innovation or a new idea that’s coming to market and it’s happening at an incredible pace which in other circumstances may not have been possible.

You’re also finding companies in very disparate spaces coming together. There are a wide variety of companies doing their bit - such as Formula One teams, McLaren and Williams etc and universities like UCL and hospital trusts, even bigger automotive manufacturers who are coming together to find solutions to the ventilator challenge.

There is a lot of innovation going on because companies are often venturing out of their comfort zone, going from a different sector into a new one, so there are new things to think about. The problems COVID-19 presents are very unique in themselves, by their very nature you’re probably making things which wouldn’t have been thought about previously and possibly new things as well.

Wherever you are in that supply chain – whether you’re making the final product, a small part of it or if you are designing the product itself - there’s probably some value in all of those aspects. The thing to remember is that whatever is being made now will probably be valuable after COVID-19. These businesses will outlive COVID-19 and are likely to find other opportunities for collaboration, diversification, new applications and new markets to operate within.

From an IP perspective, if you’re making a product, for example if your company made a visor or a face mask they could be protected by something like a patent, protecting the way it works or it could be protected by design, protecting the appearance of the products. By doing this you can capture its value and add to it because it means you have the monopoly right to those innovations that other people won’t have unless you grant them access to the innovation, on your terms.

On the face of things, it may feel like this is a contradiction and by working together you are providing these things freely and openly through sharing. However, if you try to protect these things, it seems to be at odds with what you’re trying to accomplish.

Although, you can do both things without contradiction because you can protect your IP and agree to share it on your own terms. In this current situation, you’re happy to share your IP with partners and collaborators but you can agree that after COVID-19 it will be different and come to a different arrangement.

Whether it is a royalty payment scheme or a license, you can say afterwards that you want to go your own way, thank you very much and you part ways with said collaborators. Protecting your IP gives you the ability to do that as a company and if you don’t then you may have limited options and your product might not outlive COVID-19.

Things to think about when collaborating are:

  • Who will own what?
  • Who will own the IP?
  • What are the terms now and after COVID-19?
  • What will be the effect of disclosure?

Make sure you keep your commercial head on and think about what you should and shouldn’t disclose and at what stage. You don’t need to reveal everything about your idea in the early stages, you should instead talk about its possible results and achievements, rather than discussing how it works. If you do this, it’s unlikely to prejudice any patents or design registrations you might want to file. If you start off by telling your partners everything without a confidentiality agreement in place, you will be putting yourself in a weaker position.

You mentioned benefits; one of them being about protection, which sounds a bit defensive at a time when people are being collaborative. Could you talk through some other benefits which businesses can extract through their intellectual property?

Patents give you the benefit of a long-lasting right, they last around 20 years after being granted. This is also a monopoly right which gives you the ability to stop any third party from copying or doing what is shown in the patent, you can stop all infringements as the patent owner.

There is something called The Patent Box from the HMRC where companies can apply for a lower rate of Corporation Tax to profits earned from its patented inventions. This service aims to both incentivise and protect innovation in the UK but also includes worldwide sales within the calculation, that’s quite an attractive sell for businesses.

Patents mainly give the business control because if you have a customer who buys your patented product and they become a big customer to your company, what’s going to stop them from going to someone else and saying ‘could you make this but 20% cheaper?’. That wouldn’t be fair to the business due to the effort and time taken to make the specific product and then someone else could come along and cut them out of the picture. By having a patent, you are protected and your customer would not be able to do that without infringing on your rights or at least having to pay a royalty fee.

There are many benefits available and there is a lot of value you can extract from IP when it comes to design registrations. They are slightly different in that they protect the appearance of a product, they’re not as wide-ranging as patents because someone could copy the way that something works but make it look different, and that wouldn’t infringe on the design registration. At the same time, designs are a good low-cost alternative to patents as you can stop third-party copycats coming into the market. They usually last around 25 years (there may be renewal fees).

You can do all sorts of things once you protect your IP and capture the value. It could be an opportunity for commercialisation, if you work as a manufacturer in the UK then you could use a patent to license a US partner to make your product and then take a share of the profits or a royalty fee. This takes the risk out of the opportunity and enables you to go to a market you wouldn’t always be able to go to.

You have spoken about a handful of techniques and tools there for businesses to protect their IP and the benefits of doing so. What are the typical procedures and costs involved in registering IP rights?

The first thing you should do is speak to a professional patent attorney, like myself, to look into your business and look at your products to see what IP rights may exist.

Are there patentable inventions?

Are there designs, trademarks, copyright?

Identify what those are and then identify how they could be protected. The cost will depend on the specifics but the cost of filing is typically between £3,000 to £5,000 excluding VAT. This would usually include any official fees due and can include what’s known as a search fee which is part of the process.

Often, people have the misconception that they need to write a huge essay describing their invention for a patent attorney to draft an application. Usually a patent attorney will look at your invention, take their own notes and you can provide drawings to them if necessary and they may ask you for a two or three page description. This will then be filed and have a patent-pending status.

The patent won’t be published for 18 months and will stay confidential, your competitors will not know the contents of what you have protected.

After those 18 months, there is an examination process of around 8 to 12 months to get to the end of a hopefully granted patent. During this time you still have a patent-pending status which still has value. You can accelerate the process with other measures which you can discuss with an IP attorney. Within 12 months of filing an application, you have the option to extend protection to other countries, whilst retaining the date of your original application.

When you look at design registrations, they are quite different. There is no substantive examination in the UK or EU, they involve having drawings prepared. Generally speaking, the best design registrations and the broadest protection offered by design registrations are ones with the drawings made with black and white lines, with the advice of an attorney who can identify which aspects should or shouldn’t be shown.

As the cost is quite low, often companies try their own hand at design registration but then they don’t always get it right. They sometimes show the whole product but that means your situation is limited to everything shown in the picture, if it’s a photograph of your product then it covers every aspect of what is shown but it can be quite limiting.

Getting advice is useful for this but it’s cheaper compared to patents, costing around £600 in the UK and up to £800 in the EU. Registrations also happen a bit quicker as there is no substantive examination that occurs.

The Black Country Local Enterprise Partnership have a long-term desire to encourage more firms to take advantage of some of the schemes that have been mentioned and Innovate UK grants. How can we encourage companies who are protecting their intellectual property to take advantage of these schemes after COVID-19?

Hopefully, by the time COVID-19 has receded, many companies will see themselves as innovative because they have brought something to market that they may not have thought about before. The perception is that there will be a fair amount of funding after COVID-19 to help deal with the fallout, so there should be more grant funding available via Industrial Strategy Challenge funds that have been launched recently to aid innovation.

Protecting your IP might make you more credible to Innovate UK so it may increase your success with applications. Often, Innovate UK grants involve an aspect of partnership and protecting your IP rights can also make you more credible to your partners. For example, big players at automotive manufacturers won’t speak to anyone with an idea unless it has a patent application or something similar filed first.

It’s a win-win situation and I think hopefully in a company that has managed IP, now will have the confidence to go to Innovate UK. Some companies seem to think that IP is only for big companies such as Google or IBM but this is not true, IP is just as applicable for any company of any size.

Your innovation probably has more value to you as a proportion of your business than any single innovation Apple or Google or anyone else, because they have so many others it’s unlikely that one of their inventions will have that much value that it will affect the whole business. For smaller companies, a patent could be hugely valuable.

Often we have to persuade companies that they are innovating and that IP is for you. This is why it’s important for companies to have confidence to protect their IP and to go to Innovate UK.

So if a company listening does think that it may be relevant to them to start protecting their IP or at least start a conversation, can they get in touch with you directly? What what's the easiest way to put them in touch?

Of course, (you can find Jagvir’s contact details below) feel free to find me on LinkedIn and drop me a message. We'll happily offer a free consultation at no cost to you as a business or an innovator to help work out if IP is for you and how it can help you. We are very happy to do that.

And actually there are some specialist funds out there in the region that could be used towards your IP as well.  Things like IP audits in particular where you can have very attractive grants where you as a business put in something a few hundred pounds, maybe £500 it used to be, including VAT, and then the IPO will give you a grant of £2500 to spend on IP advice. You could do some quite substantive work as part of that, and that gives really good confidence to business without having to spend a lot of money at the beginning.

 

If you’d like to find out more about Forresters or contact Jagvir directly, here are his contact details:

Jagvir Purewal

Senior Associate, Technology & Engineering

Forresters

T: 0121 236 0484

E: jpurewal@forresters.co.uk

 

If you are looking for support regarding intellectual property or innovation funding, whether it is related to the current COVID-19 disruption or not, please do get in touch with us and we will be happy to point you in the right direction towards relevant grants or more general ongoing support.

Don’t forget, our support is completely free and impartial and you can reach us at enquiries@bcgrowthhub.com or on 0300 770 2245