It is
always nice to know that the time and effort spent on patent protecting a
technology is not wasted, in particular that a technology can be wildly
successful and that, in the absence of patent protection, competitors will move in.
Such is
the case with Xaar plc, “a decently run company with good products and a
strong market position” according to The Times. As a manufacturer of digital printheads for ceramic tiles, Xaar
had “an exceptionally good 2013 on the back of a boom in Chinese construction”
with a market share of 75 per cent.
However,
The Times notes that this market share “has attracted Japanese competitors
and hit pricing” in 2014. This is particularly because some of the
competitors are long-standing licensees of Xaar technology against whom Xaar
has reduced scope for enforcing its patents to defend its market share.
A more
detailed analysis of Xaar’s intellectual property business models is to be
found in a Cranfield University working paper available at http://dspace.lib.cranfield.ac.uk/handle/1826/4685.
A two-day course on engineering intellectual property for business advantage
is also running at Cranfield University in October. Further details can be be found at http://www.cranfield.ac.uk/courses/training/engineering-intellectual-property-ip.html.
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.
Clear communication is as much of a challenge in IP management as in any other field of business.
Recent litigation in the UK courts concerns a letter sent by a patent attorney to his client reporting a search carried out for patents in the name of another company, H. The search had shown only one patent in existence relating to company H and the patent attorney’s letter had stated "Therefore I believe the only problem you will have with this problem will be in the United States."
Ten years later and the patent attorney and his client were in dispute over what this statement meant. The patent attorney contended this was advice related to the likely infringement of the scope of the claims of H’s patent by the client. The client contended this was advice related to the likely validity of the client’s own patent application in the light of the disclosure of H’s patent.
"This difference between scope of a claim and disclosure is universal" noted the judge deciding the litigation. "A patent claim may have wider scope than the thing described in the specification. So it is possible to have two patents, one earlier than the other, in which the later one is novel (and inventive) over the earlier one but for which the product described in the later one infringes the earlier one."
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.
…
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.
‘Uber, the global on-demand taxi service, has achieved one
of the highest valuations for a start-up with venture capital backing by
fetching a price tag of $18.2 billion in a private fundraising’ noted The
Times earlier this week.
‘The price looks absurd’ notes the Business
Analysis section of the Guardian, ‘ … the notion that Uber will be allowed
to enjoy a virtual monopoly looks questionable. If taxi drivers are willing to surrender 20% of their fees, there
will be competition, because there are plenty of talented software designers in
the world.’
To reduce the risk of such competition, Uber Technologies
Inc. has:
-
filed patent applications to its ‘system and method for
arranging transport amongst parties through use of mobile devices’
-
registered the design of its computer interfaces and icon
-
highlighted the issue of copyright infringement on its
website
It has also protected the ‘UBER’ brand name and logo by
trade mark registration. According to
The Times, this brand was inadvertently given publicity worth tens of millions
of pounds by the recent protest against the Uber mini-cab app organised by
London black cab drivers.
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.
According to the Nanalyse investor website, California-based LightSail
Energy Inc. aims to produce the world’s cleanest and most economical grid energy
storage systems using compressed air.
Nanalyse notes that ‘If the process of compressing air sounds simple,
LightSail has gone to great lengths to protect their proprietary process having
30 patents and … filing patent applications consistently over time to
further improve upon their technology’.
Of course, simply protecting IP will not generate money (although it
will certainly consume money) – an IP business model is also needed. One possible IP business model comes from Dr. Michael Nakhamkin, who has been granted patents in the US, China and elsewhere relating to compressed air energy storage systems.
In 2013, Nakhamkin sold these
patents, patent applications, trademarks and other IP to US multinational
Dresser-Rand for an undisclosed sum. He was also retained by Dresser-Rand
as a consultant. According to a press release at the time:
The acquired intellectual property complements Dresser-Rand's current
SMARTCAES™ compressed air energy storage technology and expands the range of
its offerings. Dresser-Rand will now be able to provide the smallest to the
largest CAES projects to meet specific grid scale requirements.
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.
A recent
spat between UK and Chinese companies highlights both the strength and the
weakness of secrecy as a mechanism for protecting engineering intellectual
property.
The
intellectual property in question relates to a secret method of making
acrylonitrile, a key ingredient in carbon fibre. Originally developed in the 1950’s, the method has been developed
by UK company Ineos and licensed under secrecy to companies across the globe,
including Chinese company Sinopec.
Unlike
patent protection, protection by secrecy does not expire (as long as secrecy is
maintained). This has allowed Ineos to
continue to earn royalties from its licensees’ use of the method long after the
typical twenty-year lifetime of a patent.
However,
unlike patent protection, protection by secrecy does not prevent others from
using the method if they develop it independently. This is what Sinopec claims to have done and, as a result, has
stopped paying royalties for acrylonitrile manufactured in its new plant. Ineos is contesting this claim in the
courts.
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.
Manvers Engineering’s website notes
that ‘The Plant Nappy® is a new, light
and user friendly method of spill containment; designed to replace existing,
traditional drip trays. … Whilst encapsulating any drips or spills of oil the
mat freely allows passage of water, such as rainfall, thus eliminating costly
emptying of contaminated trays after use. … The Plant Nappy® has successfully
achieved grant of patent and is now protected by patent laws.’
Manvers asserted its granted UK patent against Lubetech’s
‘Site Mat’ product.
In the course of proceedings, the UK court noted that ‘There was some limited evidence that a
re-seller had observed oil passing through holes in version 3 [of the
Lubetech ‘Site Mat’]. Layers with such
holes in cannot, in my view, be regarded as "impermeable", which is
the question.’ The court concluded
that, with certain exceptions, Lubetech’s ‘products
did not have the quality of impermeability in their base layers, and so for
that reason too do not infringe [Manvers’ UK patent].’
This is a useful
reminder that even an apparently lower performance product – in this case a mat
where there was some limited evidence that a
re-seller had observed oil passing through holes in the mat – can present
significant competition. In this case,
the competition was sufficient to persuade Manvers to incur the expense of
going to court in an attempt to enforce its patent and exclude the competition
from the market.
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.
