For companies looking to begin the patenting process, when to do so, while managing costs, are common concerns. Here, Matt Jones explains how to get started in IP.
All companies should engage with IP protection at the earliest opportunity.
Even if affording patent applications right now is a problem, they can make sure that any information that might, in the future, be relevant to a patent application is recorded with great accuracy and stored safely.
Information that would tell a skilled person how to work the invention should be kept strictly confidential until after the patent application is filed; you can’t get a patent for something if it is in the public domain.
Be aware, though, that every day you wait to file a patent for a given invention is a day when someone else might beat you to it; in research areas which are hot topics you might want to file sooner rather than later.
You should consider where you want protection for your invention; what are the key markets where it might be sold or used? Accordingly, you might need a patent only in a few jurisdictions, or to apply via the European Patent Office, or to make a worldwide patent application. Please note that the two latter routes do not give you Europe-wide or world-wide patents as such; rather, at the end of the process you will have patents in multiple jurisdictions. However, these processes do at least make applying for patents in multiple jurisdictions easier and (usually) less costly.
Also, it might be possible to get funding from third parties to assist with applying for patents, on the basis that they get a piece of your profits once the invention starts making you money. Ultimately, with decisions of this magnitude I would always recommend seeking professional advice from people who understand your business and personal circumstances. Contact EIP for an initial discussion about your requirements.
[Adapted from an article originally published by the Financial Times and FT.com]
The 2019 edition of IP Stars has highlighted seven EIP partners as outstanding practitioners.
Heather McCann, Darren Smyth, Gary Moss, Jerome Spaargaren, Kathleen Fox Murphy, and Andrew Sharples are considered “Patent Stars”, while Paula Flutter is named as both a “Patent Star” and “Trademark Star”.
Individuals are recognised by IP Stars following extensive research, including information submitted by firms, market feedback and publicly available information.
Associate Tom Hailes has joined a group behind the launch of a new community for early career stage IP professionals.
IP Futures is intended to offer networking and support for people working in IP who are not yet qualified, or less than three years post-qualification. IP Futures is part of IP Inclusive, a network of IP professionals looking to make the profession more equal, diverse and inclusive.
The IP Futures committee is conducting an anonymous survey which is looking at diversity levels among the next generation of IP professionals. To complete the survey, following the link here.
Head of EIP Brands, Claire Lehr, looks at the case of The Green Effort Limited v EUIPO and what happens when time limits go wrong.
This article first appeared on WTR Daily, part of World Trademark Review, in April 2019. For further information, please go to www.worldtrademarkreview.com.
The 2019 edition of IAM Patent 1000 has been published, with improved rankings for the firm and excellent client and market feedback.
Eleven partners from EIP’s UK and German offices have been recognised among the world’s leading patent practitioners.
Editorial lists the firm as having an exceptional UK reputation and notes that the market is impressed at the remarkable quality of its all-around offering.One client enthuses: “Maybe the most impressive aspect of EIP’s work is its ethos and ability to just get things done – the ability to press on without hand-holding, even based on sometimes-imperfect instructions, is a key reason we’d recommend the firm.”
The firm’s UK patent litigation team has risen from bronze to silver with several partners attracting positive commentary.Robert Lundie Smith is referred to as “easy to work with and very analytical” and described as “charming, intelligent and massively hardworking…”. Gary Moss is described as a FRAND genius and “an excellent strategist,” who possesses an “elite understanding of telecoms patent litigation”; while Matthew Jones is recognised as having a percipient understanding of life sciences litigation strategy which is informed by deep industry knowledge; and Kathleen Fox Murphy is acknowledged as having over 17 years of complex litigation experience and brings considerable technical versatility to the table.
The firm’s UK patent prosecution team is listed as recommended with specific mentions for the “commendable”Darren Smyth; Jerome Spaargaren who is renowned for his outstanding telecoms and medical technology insight; Laurence Brown noted as qualifying as a patent attorney with the highest mark in his year; Matt Lawman who has an acute appreciation of what industry professionals need to hear due to time spent in-house at BT and Hewlett Packard; and Heather McCann dubbed as an oracle when it comes to European filing strategy.
The firm’s German patent infringement team is ranked in the bronze category and known as a boutique that punches above its weight internationally, leveraging its expertise and connections to put together a seamless offering. Christof Höhne is noted as the name to dial for well-measured multi-jurisdictional counsel; while Michael Munsch’s involvement in high-profile litigation battles also marks him out as a stand-out practitioner on the German scene.
IAM Patent 1000 has been compiled following an extensive research process which included in the region of 1,800 interviews with numerous attorneys at law, patent attorneys and in-house counsel to gather market intelligence on the leading players in the field.