…
who has to decide where the value lies in an invention and direct the European
Patent Attorney to spend time (and money) drafting a patent application to
protect that value, knowing that this may change due to circumstances beyond
the manager’s control. Recent patent
litigation illustrates this risk.
American
company TDY Industries made cutting inserts for machine tools. Back in October 2003, TDY thought that they
were the first inventors of a novel cutting insert profile having convex cutting edges and enabling fast removal of metal. The specification and claims of TDY's initial patent application were drafted accordingly.
Only some
years later did TDY learn that "Hitachi had got there first" and had filed a
patent application in May 2001 that had published in November 2002.
TDY then
amended the main claim of its European patent application to add the
requirement that, at the bottom of the cutting insert, there was to be a
substantially straight cutting edge section, the purpose of which was to create
a good surface finish. TDY
argued that this was a "beautiful concept" and an idea which
had "great technical and commercial significance".
However,
the litigation judge observed that "whilst the use of a straight cutting
edge to guarantee good surface finish is disclosed in the … patent, it is
presented as an option and is not referred to in the objects of the invention
or the advantages of the invention. I was also told that this feature was not included
in any of the sub-claims of the application as filed. There is no
description of the way in which the cutting insert … needs to be used to achieve high speed cutting and good surface
finish".
This is but one of many ways of using intellectual
property in engineering business. You should of course seek professional
advice on your own particular circumstances.
