mouse trap

Who owns inventions?

E&T offers tips on how best to patent an idea. 

It is said that 'The meek shall inherit the Earth', but for now it's the inherently rich and shrewd plus, ironically, it is the people who tell us that 'The meek shall inherit the Earth', who own most of everything. 

Ownership of strong defendable intellectual property rights (IPR), be it a patent, registered or unregistered trademarks and design rights, copyright, or more commonly, a strategic combination, can be just as lucrative, as bricks and mortar property, or any other form of property for that matter, but are complex and expensive, particularly when patenting, to secure, maintain and defend. 

I know, as I once sold my car and lived in a factory to help pay for it. So a confession here: 'I hate the patent system with a passion, as it kept me poor for many years and I believe it has become overly greedy in many areas, a tax if you like, on invention and inventors'. That said, I am thankful that I have them - a double edged sword - or the exclusive ownership of my invention (my monopoly) would be in question and, as a result, make it unlikely I could sell licences, as I do.

I have managed to retain the lion's share to most of my inventions - the key for me was getting advice early on an IPR strategy. I clearly remember my confused state, of trying to understand all the processes involved (not just in IPR protection, but the inventing business in general). The learning curve was enough to drive me mad, although I do say 'The nearer to insanity I get, the better I invent' - the trick is getting back! 

Before I get into the nitty-gritty world of how I protected my inventions, with some do's, don'ts and tips on IPR's that I have learnt, sometimes the hard way, it is more important, as none of this will matter, that the invention itself is good, new and has a large enough market to make it viable. In the pet control industry, a new area for invention for me, I have invented a rat trap. As an inventor, it is almost mandatory to try and invent a new mouse/rat trap, perpetual motion and time machine. So I have at least started, but alas, I think I am a little late for the latter. 

Rodent infestations are an increasing worldwide problem. For example in China, South Africa and India their government are asking them to eats rats, in an attempt at culling. On average every hut in South Africa has 10 rats and there was a recent plaque of rats (2 billion) in one part of China alone. The USA has an estimated 1.25 billion rats (causing $18.4 billion of damage annually here). Approximately six to seven per cent of all fires are started by rodents, gnawing through electrical cables and, if true, a more amassing figure is that major crop losses, caused by rodents, is estimated at high as 1/5 of the world's crops. Therefore, with the right trap, there is a big market potential, making it, in my eyes, worth protecting.

My patented "Putdown®" rat trap, uses no poisons or power and, the unique selling point (USP), it resets itself, so it can keep on killing time and time again. I also believe it would, in comparison to using poisons, be deemed as humane, as poisons can take up to 5 or 6 days to kill, whereas mine may not be painless, nevertheless takes only 20 seconds.

Patenting in four easy steps:

1. Have a professional patent search carried out. The 'new' part I mentioned earlier is important, before spending significant amounts of time and money on the idea, only to find it has been done before and is protected or is in the public domain already. I know a large company, no name given, who decided to update a product range of theirs and spent a small fortune. When it came to protecting them they did a patent search and found, to their horror, that all the new inventive steps were already patented. What made it worse is that these patents belonged to them! The exercise had been done a few years earlier and the people who did it had left the company, so there was no one left who remembered. 

This is an extreme example, not just of patent searching too late, but poor communication. My advice is to have a professional - do not do it yourself, use the British Library, Intellectual Patent Office or a registered Patent Attorney - patent search carried out and keep on searching for fresh prior art. A patent search will also throw up who owns what, identify the competition and potential licensees and is a great resource for ideas and checking other solutions. Also check for your invention in trade magazines and on the Internet and, if possible, ask people from the relative industry (getting them to sign a Confidentiality Agreement first or do not disclose too much) if they have seen anything like this before. 

Strong intellectual property rights, as well as 'proof of concept' (with working samples) and an interesting story, helped to get the investment I needed - from an ex Ernest & Young Director - to move forward. Not only did it help pay for prototyping and IPR protection, but the company I set up exclusively for the invention looked more credible, having a major player onboard. Creating a team around me, with relevant business skills, helping to open doors and gave me free in-house advice on tap.

2. Don't disclose your invention to anyone without protecting your IPR's or get them to sign a Confidentiality Agreement first, as it may prevent you obtaining a patent latter.

3. Do check what the best IPR strategy for your invention is - get professional advice from a registered Patent Attorney/s. I once heard Sir Alan Sugar say that he did not patent much, but got to market, having products with short life cycle, quick and make money, then moved on to the next idea, while the competition tried to catch up. Also, rather than patenting, it may just be enough, in some cases, to keep your invention secret (particularly if difficult to back-engineer) or maybe just a trade mark (again, take advice). A high risk tactic, to create new markets and give an invention history, is to encourage it to be stolen. Then threaten the infringers with litigation, to secure licensing deals or a pay-off. This is probably not advisable, if you want to sleep at night!

As my rat trap has strong patentable qualities - almost a blue sky project with little relevant prior art. My IPR strategy was to patent it and, also register a trademark, e.g. the 'putdown®' trap. I decided to register a trademark, because I intend to bring this trap to market myself in the UK, in the hope to give it some market success. Making easier, and more lucrative, to roll out globally through licensing a year later and in year two, invent a smaller trap version for mice. I have not registered the design, because, although the trap has a very distinctive shape, the shape was established by its function, therefore in my option, not eligible (to be validly registered the design must be the result of a 'freedom' of design).

Tip: I tend to keep things secret and patent late - at the 'Almost ready for production stage' - otherwise, if still developing the idea, it could be very different after 12 months. Also I want to have more time to sell a licence while the patent costs are still low (the trick is to try and find someone else to pay for them, and the further forward the idea and later the patent application the better). Get advice on this from your patent attorney. 

Tip: If you have kept your invention secret, within the 12 months period from filing the application, you can withdraw the application and re-file later, if you wish. You lose the original priority date and risk that someone filed something similar in that lost period. 

4. Don't write a patent yourself. It may save money, but it is a false economy. If your idea is a success, you will regret the day you did that. A patent can be the most valuable asset a company owns. Poorly written and all could be lost. 

Tip: You have 12 months, from filing a patent application, to file foreign applications. At that point, do your homework, to get the broadest protection at the lowest cost possible, on where the product would be sold and manufactured. The trick is to know your market well, so it may be possible to file in the smallest number of countries (probably including a single European application) to cover most of it.

My own inventor's journey, though on occasion very painful, has now become all absorbing and has taken me all over the world, a by-product of being an inventor that I enjoy the most. Most memorable - a flu ridden, jet-lagged, sleep-deprivation hangover trade mission to Japan, where I invited my prospective Japanese clients to a British Ambassador's Residence party in Tokyo and they agreed to an option deal, on the spot, for one of my other inventions. When they left the party I celebrated in style and have a cloudy memory of getting into a taxi at 4.30 in the morning and asking the driver to take me back to my hotel. He kept on saying 'cop', 'cop'. It turned out to be a police car! 

In return for my invite, my new client wanted to impress me, and booked a whole restaurant, a famous restaurant called Kitcho in Osaka, just for me. The meal started with each person been given a hot stone, shrouded in flowers and plants, each to cook on. The best was yet to come as a Geisha cooked and fed me exquisite Japanese food, using chopsticks, completing my one and only, but hopefully not last, James Bond moment.

As a regular user of the British Library facilities, for research and patents information, in the past and being their first ever 'Inventor in residence', I am pleased to put something back and get to see literally hundreds of inventors/innovators/entrepreneurs individually. Fast approaching 350 to-date, in free one-to-one hour long confidential meetings, called 'ask an expert'. I make a big effort to be consistent in this voluntary role with my approach and advice, being 'non judgemental and nurturing'. It is disturbing and frustrating to see sometimes, the ownership of a great ideas slip through the inventor's fingers, because they made it public before protecting it (very common with university student projects), or got duped by some sharp practise invention promotional company.

Key points for 'ask-an-expert' meetings:

Best solution, patent search, market and size, manufacturability, adding value, reality check, IPR strategy, dispel paranoia, avoiding sharks, right direction, business model/plan/contracts, funding options, negotiation tricks, timeframes, objectives and re-motivation.

In conclusion, when you have 'a bit of an idea' take IPR advice early from people, someone who have been through the process of inventing and getting things to market, or licensed successfully, and learn from their experience. Better still, is if you can find a long term willing mentor. 

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