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Progressing innovation outside the lab: a task list for researchers during lockdown – part two, software/electronics innovation

Member News published by Appleyard Lees IP LLP, under Innovation / Incubation, Legal / IP, Research (Technology)

In part two of our series, “Progressing innovation outside the lab”, we outline five strategic tasks that will further intellectual property during COVID-19 disruption, to prepare for the return to more normal working. Writer, Appleyard Lees Principal Associate, patent attorney and software/electronics specialist Ithel Jones, works with multinationals and start-up businesses on patent matters ranging from telecommunications, sensor networks and storage systems through to gaming, fintech and mobile apps

Writer, Appleyard Lees Principal Associate, patent attorney and software/electronics specialist Ithel Jones, works with multinationals and start-up businesses on patent matters ranging from telecommunications, sensor networks and storage systems through to gaming, fintech and mobile apps.

Perspective from a software/electronics engineer and patent attorney

Whether you’re a working-from-home expert, or a novice working from home for the first time, enforced home working can be far removed from business as usual. Projects may be put on hold, customers unable to commit to orders, colleagues harder to reach.

Despite the difficulties, now could be a good time to look to the future, to consider which developments will be most valuable to your company when commercial activity resumes. Keeping on top of your IP strategy will not only protect these innovations, it can also be done successfully from home, as it doesn’t necessarily require face-to-face meetings or access to special equipment.

Task one: identify inventions for possible IP protection

It’s not unheard of for companies to miss out on patent protection because an invention was disclosed before a patent application was filed. This could have been due to time pressure or simple oversight. No such excuses when your schedule’s rather more relaxed!

You could spend some time reviewing your various projects to see whether any are suitable candidates for patent protection. It’s worth considering protecting any new development that gives a commercial edge.

Your company’s business plans may be changing; abandoned projects could be revived, or future work may be brought forward. You may even be looking at completely new markets or products. If there hasn’t been a non-confidential disclosure of an invention, patent protection may be viable.

It’s also good to bear in mind that you don’t necessarily need a fully-fledged product to file a patent application. A fairly high-level description of how your product works (or will work) can be sufficient.

This means that it’s possible to file a patent application at an early stage in the development cycle. As the patent systems of most countries award rights on a first-to-file basis, this could prove beneficial. It’s also possible to file further related patent applications that cover improvements within 12 months of the original filing date.

Task two: deal with outstanding case matters

Have a look to see if your attorney has requested your input on any current cases. I’m always very glad to receive inventors’ comments on official actions and cited prior art – the more detailed the better! Not only can they provide industry-specific insight that can help overcome technical objections, they may also reduce overall workload and costs.

Your attorney should be able to provide a schedule of upcoming deadlines and actions due on your cases on request. With that, it is possible to evaluate which due dates can be postponed or prioritised.

Task three: check your coverage

Changing your business plans can also affect the scope of coverage required for your existing patent filings. For instance, if one of your existing products is marketed or modified for a new use, your current patent filing should be analysed to determine whether it already covers this, or whether additional protection would be advisable.

You may also be looking at changing your geographical markets, perhaps to focus on the strongest or to move into a new territory. This could affect, for example, foreign patent filing decisions at the priority deadline, the PCT national phase or European Patent validation stages.

Task four: investigate third parties’ IP

Changes to a company’s commercial activities can mean new risks of infringing others’ IP rights. Your patent attorney can carry out investigations such as freedom-to-operate searches to assess these risks to help you decide how, or whether, to proceed.

Patent landscaping is another useful tool that’s often overlooked during busy periods. It can offer an overview of patenting activities in your sector and help identify new opportunities for product development.

Task five: consider how wider changes in your company may affect your IP

If your business is likely to undergo changes in structure or working methods, these can have implications for your IP strategy.

For example, there may be issues with confidentiality if work will be carried out at new locations. Using different external contractors could result in questions over ownership of IP. IP should also be considered in transactions such as selling part of a company or acquiring a new business.

Special considerations for software businesses

Although there are restrictions on patenting certain types of software, we’d still generally advise taking a default position that all your developments are potentially patentable. This will avoid missing out on patent protection by making disclosures too soon.

Please also bear in mind that changing your normal marketing processes can impact IP. For example, offering unrestricted access to a trial version of new software could damage your chances of obtaining patent protection for the product.

Special considerations for electronics businesses

Compared to software programmers, electronics engineers may find it more difficult to carry out their work away from site.  However, you may be making more use of software simulation or design tools. In general, inventions created using these should be no less patentable than ones developed using physical hardware.

Your business may implement new measures to enable work to continue on-site whilst complying with social distancing. You may even look anew at automation. If any new equipment or services you develop are likely to continue to provide benefits over time, then you could consider patenting them. In some cases they could form the basis of commercial solutions that could be marketed or licensed to other businesses.


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