Who owns inventions?

  • Mouse Trap (overall view) by Suzanne Wall (GSM&J, 2008)

Mark Sheahan, President of the Institute of Patentees and Inventors, a Fellow of the Royal Society of Arts, Vice Chairman of the Round Table of Inventors and the first Inventor in Residence for the British Library, writes about his experience of patenting his inventions.  

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

Ownership of strong, defendable intellectual property (IP) rights, 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. They 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 them. 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, they are a double-edged sword - I am thankful that I have them, or the exclusive ownership of my invention (my monopoly) would be in question and, as a result, it would be unlikely that I could sell licences as I do.

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

Before I get into the nitty-gritty 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 that the invention itself is good, new and has a large enough market to make it viable, otherwise none of this will matter. In the pest control industry, a new area of 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, the governments are asking people to eat rats in an attempt at culling. On average, every hut in South Africa contains ten rats and there was a recent plague of rats (two billion) in one part of China alone. The USA has an estimated 1.25 billion rats (causing $18.4 billion of damage annually). Approximately six to seven per cent of all fires are started by rodents gnawing through electrical cables, and a more amassing figure is that major crop losses caused by rodents are estimated at as high a fifth 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 five or six days to kill, whereas my trap may not be painless, but takes only 20 seconds.

Patenting in four easy steps:

1. Have a professional patent search carried out

It is important to ensure your invention is new before you spend significant amounts of time and money on the idea only to find it has been done before and is protected or 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 the products, 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 of poor communication. My advice is to use a professional - do not do it yourself. Use the British Library, the Intellectual Patent Office or a registered Patent Attorney. 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. You should also check for your invention in trade magazines and on the internet and, if possible, ask people from the relevant industry (get 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 me to get the investment I needed - from an ex Ernst & Young Director - to move forward. It helped me pay for prototyping and IP protection, and it made the company I set up exclusively for the invention look more credible having a major player onboard. I created a team around me with relevant business skills, that helped to open doors and gave me free in-house advice on tap.

2. Do not disclose your invention to anyone without protecting your IP rights (or get them to sign a confidentiality agreement first, otherwise it may prevent you obtaining a patent later).

3. Do check what the best IP 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 he got his products with short life cycles to market quickly, made the money and 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 it is difficult to back-engineer) or maybe just get a trademark (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, my IP strategy was to patent it and also register a trademark, ie. the Putdown® trap. I decided to register a trademark because I intend to bring this trap to market myself in the UK. This will make it easier and more lucrative, to roll the product out globally through licensing a year later and to invent a smaller trap version for mice in year two. I have not registered the design, because although the trap has a very distinctive shape, the shape was established by its function and therefore, in my opinion, 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 I am 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-month period since filing the application, you can withdraw the application and re-file it later, if you wish. However, you lose the original priority date and run the risk that someone filed something similar in that lost period. 

4. Do not 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. If it is poorly written, all could be lost. 

Tip: You have 12 months, from filing a patent application, to file foreign applications. At that point, do your homework on where the product would be sold and manufactured. This will help you to get the broadest protection at the lowest possible cost. 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, the by-product of being an inventor that I enjoy the most. One of the most memorable trips was a flu-ridden, jet-lagged, sleep-deprived, hungover 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 being given a hot stone, shrouded in flowers and plants, 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 British Library facilities for research and patents information and being their first ever Inventor in Residence, I am pleased to give something back and see literally hundreds of inventors/innovators/entrepreneurs individually. I have seen almost 350 people 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, and to be non-judgemental and nurturing. It is disturbing and frustrating to see how, 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 because they got duped by some sharp practise invention promotional company.

Key points to think about for ‘ask an expert’ meeting:

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

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

Mark Sheahan is the Managing Director of Compgen Limited and Proprietor of Plasgen Design (inventor of the new Squeezeopen™ and Popi™ closure technologies), Director of Ambosco Ltd and D&K Watersavers Ltd. He also co-writes a monthly column for the Institute of Engineering and Technology Magazine, called Inventors' Inbox

www.squeezeopen.com

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