Uber – valued?

‘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.

 

 

LightSail Energy Inc.

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.

The strength and the weakness of secrecy

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.

The Plant Nappy (TM)

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.

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.