TPN Europe 2019: Emerging tech rights owners must hedge their bets
Businesses seeking to protect emerging technologies should file multiple patent applications, according to lawyers at TPN Europe 2019, hosted by WIPR on June 20.
Robert Sackin, a partner at Reddie & Grose in Cambridge, explained that one of the challenges with emerging technologies is that much of the time, businesses aren’t sure how, or whether, they will be able to monetise the technology.
“A lot of the time, these technologies are borderline patentable, and you aren’t sure what to do with it. You also aren’t sure if an innovation is going to catch on or not,” Sackin said.
Additionally, he said that often there is not much prior art, or any obvious competitors, which also has implications for patent filing strategy.
At a large company like NXP Semiconductors, Chris Hardingham, the senior director of the IP group in London, said his department files upwards of 500 patent applications a year.
He said this makes it possible to file multiple applications to cover a certain technology or innovation.
When it comes to filing patent applications for emerging technologies, Hardingham said he doesn’t treat the patent application any differently to any other filing, but rather the challenge is to work out where to place them in his company’s portfolio and who handles them.
Sackin, who often works with start-ups, recommends that companies file multiple patent applications to cover a product, as this saves money and time in the long run.
“It takes less times if you have multiple applications,” he explained, as it speeds up search requests at the UK Intellectual Property Office (UKIPO).
When companies file for a patent in the UK, they have the option of requesting a search request. Once a search request is entered, the UKIPO looks for prior art which may conflict with the patent being filed.
Another challenge with emerging technologies, is the risk that they may not turn into something which a business can monetise.
At NXP, he said the IP group carries out regular reviews of their patent portfolios, and if a patent hasn’t been used in 15 years, they must decide whether it is of any future use.
Hardingham said that in this scenario, NXP “must cut their losses when its clear a product or technology won’t succeed.”
“Normally, within my company when a project gets shut down, staff get reallocated and we must decide what to do with the patent,” he said.
“In some cases, the patents get divested as they may fit another company’s portfolio,” he added.
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