Coming second in the patent filing 'race'

Patents are usually granted on a ‘first-to-file’ basis.  An illustration of the implications of this principle comes from a recent Opinion from the UK Intellectual Property Office as to whether the actions of OpenHydro Group Ltd in relation to a sea-bed mounted tidal turbine constitute infringing actions in relation to a patent belonging to Rotech Holdings Limited.

The Opinion notes that OpenHydro also has a patent which illustrates a sea-bed mounted tidal turbine.  However, the 11 April 2007 earliest filing date of that patent is four weeks later than the 14 March 2007 earliest filing date of Rotech’s patent.

Had OpenHydro only filed their patent application five weeks earlier, that application could potentially have invalidated Rotech’s patent and given the patent right to OpenHydro.  In the event, the Opinion concluded that OpenHydro infringed Rotech’s patent.

Earlier research at the Engineering Intellectual Property Research Unit confirms that there is greater risk of coming second in the patent ‘race’ in technical fields - such as green energy - in which there is a high rate of growth in the number of patent applications being filed.

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 picture paints a thousand words …

… however, where a patent application is concerned, a picture may not always paint the words wished for by the inventors.  Hence the need in a patent application for written claims and detailed technical description.

This was the experience of AP Racing when it went to the UK courts to assert its UK patent for a brake caliper ‘in which each of the stiffening bands has a profile that is asymmetric about a lateral axis of the body when viewed in plan.’  AP Racing had previously added this ‘feature 6’ to the main claim of the patent application during the examination process before the UK IP Office.

According to the court, AP Racing ‘accepted that the text of feature 6 is not to be found in the [original] application document’ but noted that ‘AP Racing also relies on the point that it can be seen simply by looking at the figures [of the original application document] that the peripheral stiffening bands are asymmetrical’.
 

However, the court did not agree with this point, concluding that it did ‘not believe anyone reading the [original] application would have derived from the application a concept at the same level of generality as feature 6’ and declaring the claim invalid on the grounds that extra subject-matter had been added to the application in the course of the examination process.
 

More detail on the challenges in protecting optimised designs of brake calipers can be found in Tirović, M. and Hartwell, I.P. (2013) ‘Design optimisation – challenges in protecting intellectual property’, Int. J. Intellectual Property Management, Vol. 6, No. 3, pp.159–177.
 

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.

SoundAlert Ltd

Protected engineering intellectual property can increase the likely financial return from engineering technology and enable more ways of making a financial return.

A recent illustration of the latter comes from the automotive industry. SoundAlert Ltd was formed in the mid-1990's to exploit directional alarm technology developed by a Leeds University professor.  Having protected the technology by patents, the company pursued a licensing business model but went into administration in 2008.

The administrators subsequently pursued a different business model, selling the patents to Kent-based Brigade (BBS-TEK) Ltd.  Brigade then pursued a manufacturing business model, in the course of which they asserted the UK patent against a competing vehicle alarm sold by Leicestershire-based Amber Valley Ltd.
   
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.