Patents – what SMEs need to know

Patents – what SMEs need to know

In this post, Kaya Elkiner, Head of Patents at Ashfords LLP discusses what IoT SMEs should consider when they’re thinking about patenting their IoT technology.

Patents can build some serious value in a technology business.  They attract investors and keep better-resourced competitors at bay.  They act as powerful bargaining chips when seeking collaborations and partnerships.  They can also attract customers as patents are often seen as a mark of prestige reserved for only the most innovative of companies.  Additionally, those named as inventors on a patent are often regarded as being some of the most innovative of individuals.

Here are a few points to consider if you are thinking about securing patent protection for your IOT business:

It is easy to get a “patent pending”…

…but hard to get a patent granted.  “Patent pending” means you have submitted a patent application.  Nothing more.  The exclusive power only comes once that patent application is granted.  This can take a long time, and it is a complicated process – four to five years isn’t unusual.  Also, there are no guarantees that you will get the patent granted.  Using a professional isn’t cheap, but can maximise the chance of getting a useful patent granted, and minimise the time it takes.

Assume you can patent it 

If your technology is better in any way, then it is worth investigating if that difference is enough to warrant a patent.  It doesn’t have to be a Nobel prize-winning advance in science or technology.  Incremental improvements are enough to give your product or process an edge over your competitors, and so it is appropriate that these improvements can be protected, even if the basic concept has been around for a long time.

Here are a few (non-exhaustive) indicators of improvements to IOT technology that may be patentable:

  • A more intuitive user-interface
  • A more reliable way of collecting or processing data from sensors
  • A faster or more reliable way of communicating data between nodes in the system
  • A novel use of an existing sensor or actuator
  • A system that works faster or more efficiently due to the arrangement or configuration of the technological components within it.

Software is tricky to patent, but not impossible

It is difficult to quickly generalise exactly what qualifies software for patent protection, as each case needs to be assessed on its own merits.  However, if the software has some sort of “real-world” effect, then this is a positive sign.

Keep it confidential until you’ve got a patent pending

It isn’t possible to patent anything already in the public domain.  Therefore, if you want to reserve your patent rights to your new technology, then you will need to get a patent application filed before you launch your product or service.  Moreover, you’ll need to do this before you disclose the details of your new technology online, or even in a presentation.  If you need to talk to people outside your organisation, then only give them as many details as you’d be happy for your competitors to freely use.  It is also wise to try and get the patent application right the first time through use of a patent attorney.  If you don’t, you can shoot yourself in the foot later.

Use Non-Disclosure Agreements (NDAs)

If you aren’t ready to go down the patent route immediately, but do need to talk about the details with collaborators and investors, then use an NDA.  Apart from ensuring your confidential information isn’t abused, it’ll show who you are dealing with that you take these matters seriously, and you are a savvy business to invest in, or collaborate with.

If you want to keep it a secret, and can – don’t use patents

Patent applications are secret when you first file them.  But they are all published for the world to see around 18 month after you first file the patent application.  If the “special sauce” that makes your technology better can be kept confidential, and you don’t want anyone to find out about it, then patents aren’t for you.  One example of this is a process that is internal to your business – for example a clever algorithm that runs only on your local server, or a manufacturing process that no-one else is privy to.  Also, patents expire – usually after 20 year.  In principle, trade secrets can last forever.

Consider other IP rights

Patents are powerful, in that they can protect both the specific implementation as well as the general concept behind an invention.  But there are other forms of intellectual property that may be appropriate as well, or instead of patents.  Copyright automatically subsists in code, and other written works.  Trademarks protect brands.  Registered Designs protect the specific shape and appearance of an article, and are cheaper and quicker to obtain compared to patents.  User interfaces elements can be protected via Registered Designs, for example.

Final thoughts

A good intellectual property strategy is worthless without a good business strategy, and an excellent product or service.  Get your priorities straight and make sure that your business is onto a winner worth protecting.  Once you have your winner, don’t give the game away until you’ve put that protection in place.

 

Kaya Elkiner specialises in securing patent protection for his client’s technology.  He is a UK and European patent attorney, holds a Master’s degree in Computer Systems Engineering, and is Head of Patents at the law firm, Ashfords LLP.


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Kaya Elkiner
je.henderson@digicatapult.org.uk
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