Monday, April 26, 2021

Building value and growth for small businesses

By Julian Crump, President of the International Federation of Intellectual Property Attorneys (FICPI)

There's a myth that protecting intellectual property (IP) is the preserve of larger firms and is unsuited to smaller and medium-sized enterprises (SMEs).

While large companies invest in IP for good reasons – to protect their products and services, discourage competition and create new revenue streams for themselves – IP undoubtedly benefits smaller businesses too.

SMEs that apply for patents, trademarks or designs are more likely to grow quickly and succeed than those that do not.

In fact, the evidence is that SMEs that apply for patents, trademarks or designs are more likely to grow quickly and succeed than those that do not.

A 2019 EPO/EUIPO study pdf demonstrated that SMEs that have at least one IP right are 21 percent more likely to experience a growth period. Meanwhile, a 2021 update to the study found that fewer than 9 percent of SMEs owned at least one of the three main IP rights (a patent, trademark and design). By contrast, the figure is close to 60 percent for larger firms. This reveals a shocking disparity in the use of such a valuable business tool.

The value SMEs gain from protecting their IP assets comes in many forms

As well as serving as the current president of FICPI, I am a Chartered UK and European Patent Attorney, and a partner in the firm of Abel + Imray in London, Bath and Cardiff, UK and Spain. To look for examples of SMEs that use IP protection as a key element of their business success, my partners and I reviewed our list of clients.  We did not have to look far.

Several years ago, aircraft seating designers Acumen Design Associates moved from a consultancy model (with revenue based on project fees), to also creating their own designs, which are then patented. Today, a major part of Acumen’s revenue comes from issuing licenses for the use of their protected designs. (Photo: Courtesy of Acumen Design Associates)

The results are instructive and hugely encouraging for other SMEs:

  • Growing license sales and royalty revenue - Several years ago, market-leading aircraft seating designers Acumen Design Associates, led by founder Ian Dryburgh, moved from a consultancy model, with revenue based on project fees, to also creating their own designs, which are then patented. Today, a major part of Acumen’s revenue comes from issuing licenses for the use of their protected designs - including a large deal in 2016 with United Airlines for business class seating.

  • Winning venture capital (VC) funding XYZ Reality Ltd., has won numerous accolades for a highly accurate, “engineering grade” augmented reality (AR) solution which ensures building construction matches exactly the architects’ drawings. Their solution avoids problems with traditional site setting-out methods and penalties for errors. The patent application was complicated, involving multiple disciplines from advanced engineering to AR and physics. A positive opinion on the application from the European Patent Office (EPO) helped XYZ Reality secure venture capital (VC) funding.

Over and above the underlying product or service it protects, IP is a valuable asset in its own right. Indeed, it can become a company's most valuable asset.

  • Making SMEs more valuable for acquisition - Siltbuster Limited is recognized as the UK’s top provider of on-site water treatments and is a winner of the Queen’s Award for Enterprise. A big factor in its success has been the patenting of breakthroughs by the company’s founder, Dr Richard Coulton, who began with a vision of treating concrete wastewater at construction sites in a more environmentally friendly way. In 2018, the technology caught the eye of Workdry International, which ended up purchasing Siltbuster – and its IP.

  • From university research to university spin-out - A research project at University College London investigating how to transfect cells using siRNA morphed into a small company, NanoGenics Limited. A few years – and several research cycles – later, NanoGenics developed LipTide® to target selected genes and better combat cancer. The company sold the associated IP rights for GBP 4.5 million (approx. USD 6.2 million), helping their cutting-edge medical development advance to commercialization.

  • Using trade secrets to stay under competitor radar - Today, Rheon Labs Ltd., which makes protective body wear for high-impact sports, is a strategic and sophisticated user of IP. Initially, they relied on trade secrets to protect selected aspects of their IP, staying under their competitors’ radars (rather than filing patent applications, which are automatically published after 18 months). However, once others started encroaching on their field, Rheon Labs pivoted to patenting. This put their technology into the public domain, but in return they gained 20 years of exclusivity and their competitors must now devise their own new and inventive products if they wish to secure their own patents.
Rheon Labs Ltd., who make protective body wear for high-impact sports, is a strategic and sophisticated user of IP. (Photo: Courtesy of Rheon Labs Ltd.)
  • Trademarks to underpin commercial partnerships - The Rheon Labs® trademark was registered early, when pre-filing searches indicated there were few third-party rights that might prevent its use. As the company grew and moved into the realm of collaborations and commercial partnerships, water-tight non-disclosure agreements (NDAs) and design registrations were added to its IP estate. Rheon Labs® now has strong brand recognition, and the company benefits from valuable goodwill in its name. Registration serves to lock in that value, provides a visible sign of ownership, and facilitates co-branding with partners like Xenith LLC, a top American football helmet manufacturer, whose products now carry the Rheon Labs® trademark, and are recognized for reducing concussive impacts and associated brain injuries, alongside their own. Without registration and water-tight licensing arrangements, allowing a third party to apply your trademark to their goods would put you at risk of losing it. Registration typically protects a company’s marks for 10 years, but with the advantage that they can be renewed in perpetuity – as long as they don’t become generic terms.

  • Creating valuable IP assets to demonstrate market potential - Ceres Power is a company with patented "deep technology" that has a wide range of clean energy applications and has become a hugely valuable asset. However, had commercialization specialists, IP Group Plc, not stepped in at a critical moment, the company would likely have declared bankruptcy following the failure of initial field trials. IP Group works with early-stage companies that own IP originating from university research to get them to a point where they can demonstrate the real-world viability of their technology to attract co-investment from large corporates and ultimately acquisition. IP Group's Dr. Rob Trezona told me, "IP is a table stake. If our portfolio companies haven't secured their IP rights, they won't be able to raise finance. And typically, investors are looking for a number of patents rather than one or two." Key to IP Group’s successful turnaround of Ceres was the realization that its world-class IP position would allow it to generate more value as a technology provider that jointly develops and licenses technology than as a vertically integrated manufacturing business. The company has partnered successfully with Bosch, Doosan and Weichai Power to develop products for data centers, distributed generation and heavy road vehicles, and is able to generate value for itself through license fees and royalties.
NanoGenics Limited, an innovative, research-based gene therapy company, sold IP rights for its LipTide® therapy for GBP 4.5 million (approx. USD 6.2 million), helping their cutting-edge medical development advance to commercialization. (Photo: Courtesy of NanoGenics Ltd.)

These examples illustrate how, over and above the underlying product or service it protects, IP is a valuable asset in its own right. Indeed, it can become a company's most valuable asset. Without doubt, there will be countless other examples among the clients of other IP firms worldwide.

IP rights create a protective wrapper around an intangible asset – locking in value and making it tradeable, through licensing, pooling, securitization or acquisition. Without IPRs, investments made by companies in developing new products and processes, or even in simply devising new product ideas, are at risk. It's a bit like creating a beautiful garden without putting up a fence to keep the rabbits out!

Without the help of a specialist IP attorney, an SME is unlikely to be able to identify the important points of novelty or broad utility of their inventions, which are vital for a successful IP strategy, or may simply be defeated by the registration process.

Indeed, for SMEs, tackling IP protection can seem impossible. Seeking to obtain patent, trademark and design rights is complex. There are relatively few "self-filers", and of those few, the majority abandon their applications or are unsuccessful in gaining granted rights.

As a patent attorney, I obviously have a self-interest in pointing out the depth and sophistication of the services offered by independent IP professionals to SMEs.

IP rights create a protective wrapper around an intangible asset – locking in value and making it tradeable through licensing, pooling, securitization or acquisition.

However, given the stakes, the clear evidence that SMEs holding IP rights prosper relative to others that do not, and the all-too-frequent failure of SMEs to complete the application process on their own, the conclusion is clear.

SMEs should look to protect their IP assets to support and accelerate their growth by locking in the value of their IP and building intangible assets which can be used to underpin a wide variety of different business models, with innovation at their core.

Independent IP attorneys bring wide experience from advising a broad range of different clients. They can look beyond the immediate applications of an invention to focus on its points of novelty, giving the patents a longer useful life as the businesses they protect flex and adapt to new markets and are made more attractive to investors.

The investment an SME makes in partnering with an independent IP professional has a significant return, not only in terms of a successful application, but also for its future as the owner of IP rights.

XYZ Reality Ltd., has developed a highly accurate, “engineering grade” augmented reality (AR) solution which ensures building construction matches exactly the architects’ drawings. A positive opinion on the application from the European Patent Office (EPO) helped the company secure venture capital funding. (Photo: Courtesy of XYZ Reality Ltd.)
WIPO Magazine

Tuesday, April 20, 2021

Patents in 5G

THE TECH OF TOMORROW - EPISODE 2 -

INNOVATIONS AND COMMERCIALISATION

As one of the top ten companies regarding the number of declared 5G patent families in 2020, Oppo has filed over 3,600 families of global patent applications, declared over 1,400 families of 5G standard patents to the ETSI, and submitted more than 3,000 5G standard-related proposals to 3GPP by the end of December in 2020.

So just how important are patents and intellectual property in the 5G world, and how might that affect consumers? 

In the second episode of the Tech of Tomorrow, Richard Bradbury speaks with Henry Tang and Dennis Tan about innovation and commercialization.

The podcast is available here.

Thursday, March 25, 2021

New Office Location

 

We have moved to a new office location.


Boon IP Enterprise

1-17-08 Plaza Bukit Jalil,

Persiaran Jalil 1,

57000 Kuala Lumpur

Tel: +603 27262554 Fax: +603 27262564

Monday, November 16, 2020

RCEP: No Term Extension for Patents and Copyright

 

 
 

On 15 Nov 2020, Malaysia signed the Regional Comprehensive Economic Partnership (RCEP) along with 9 ASEAN members, Japan, China, South Korea, Australia and New Zealand. It is the largest regional free trade agreement in the world which accounts for 30 percent of world population and economy.

It aims to reduce tariffs and cost for trade between countries. It also touches on intellectual property.

In 2018, Malaysia has signed the Comprehensive and Progressive Trans-Pacific Partnership (CPTPP). According to CPTPP, members must provide patent term extension for delays in pharmaceutical approval. The copyright term for published works is 70 years minimum. Australia, Canada, Japan, Mexico, Singapore and New Zealand have ratified the CPTPP. Malaysia has not given any indication on when the CPTPP will be ratified.

I have participated in several CPTPP discussions. A few people have raised displeasure over the patent term extension. Malaysia produces a number of generic medicines.

In RCEP, there is no patent term extension for pharmaceutical delays. The copyright term for published works is 50 years minimum, in line with the Berne Convention.

Malaysia is centrally located in both RCEP and CPTPP. Shall Malaysia ratify CPTPP? It depends on whether Malaysia wants to be a nation that consumes IP or produces IP.


Wednesday, August 12, 2020

N95 is a Result of a University Research

Tsai (lower left) and his colleagues

Peter Tsai, a researcher from University of Tennessee, invented a method of corona electrostatic charging which resulted in the creation of N95 mask. The mask has a layer of filter that blocks and contain 95% of submicron particles. The technique involves an electric field to charge non-woven fibers.

The method is widely used in industries over three decades in products such as HVAC filters and medical face masks.  

"This respirator was designed for construction workers, and it was designed to be for one-time use," says Tsai in an interview with WYMT.

The mask attracted the attention of Centers for Disease Control and Prevention (CDC). It was found that the filter can capture viruses and bacteria. The filter is then recommended to be used for healthcare workers.


N95 mask from University of Tennessee

According to University of Tennessee, Tsai has 12 US patents and over 20 commercial license agreement, including four licensed to global companies.


"I'm bombarded with questions," says Tsai in an interview with SCMP.  "My customers are based around the world. I work around the clock". Demand for face masks has skyrocketed.

Tsai came out of retirement to find a way for the N95 masks to be reused. He provided a report which proposed ways to clean and reuse N95 masks without compromising the electrostatic charge required for particle filtration.

He found out that dry heat of 70 degrees Celcius can decontaminate N95 masks without diminishing particle filtration. The method was validated by National Institutes of Health. An oven can be used to decontaminate N95 masks.

Wednesday, April 29, 2020

Online Courses on Intellectual Property

There are several online courses on intellectual property. Some are free.

(Image from WIPO)

World Intellectual Property Organization (WIPO) is a leader in distance learning. General courses on intellectual property are offered throughout the year for free. Beginners can join IP Panaroma to have an overview of intellectual property. Intermediate course on specific intellectual property topics involves minimal fee. Some of the courses on demand include:

  • IP Panorama (for beginners)
  • General Course on Intellectual Property
  • Introduction to the Patent Cooperation Treaty
  • Patent Information Search
  • Basics of Patent Drafting
  • Intellectual Property Management
European Patent Office (EPO) provides specific training on patent matters. Courses relevant to European patents are offered.

  • EPO Patent Information Tools
  • Introduction to the European Patent System 
  • Patentability in Information and Communications Technology
  • Patentablility in Healthcare, Biotechnology and Chemistry
  • Patenting Artificial Intelligence
  • Patenting Blockchain
European Union Intellectual Property Office (EUIPO) is a separate entity from EPO that manages European trademarks and design. Webinars, learning area and courses offered including:

  • European Union Trade Mark (EUTM) in a Nutshell
  • International Classification of Goods and Services
  • Registered Community Design (RCD) in a Nutshell
United States Patent and Trademark Office (USPTO) produces eLearning modules for components of intellectual property:

  • Introduction to Patent Protection
  • Copyright: Encouraging and Protecting Creativity
  • Overview of Trademarks
Japan Patent Office (JPO) provides e-Learning for specific patent topics.

  • Requirements for Claims
  • Novelty
  • Inventive Step
Korea Intellectual Property Office (KIPO) also has an e-learning centre. WIPO IP Panorama was jointly developed with KIPO. Some topic of interest:

  • Patent Map
  • International Application through the PCT System and its Strategies
  • International Trademark Application through Madrid System and its Strategies
  • Interpreting and Drafting Patent Documents in US, Japan, Korea, EPO and Australia, respectively
 Coursera and edX provides courses from several universities.
  • Intellectual Property Law, University of Pennsylvania
  • Protecting Business Innovations, The Hong Kong University of Science and Technology
  • Patenting in Biotechnology, Copenhagen Business School
  • Intellectual Property Law, Tsinghua University (in Chinese)

Thursday, March 19, 2020

Extension of Deadlines to 1 April 2020

After Malaysia declared a Restricted Movement Order, public movement is restricted to essential services between 18 March 2020 to 31 March 2020. MyIPO issued a notice that the office will be closed at the same period. Deadlines that fall within the period will be extended to 1 April 2020. Online applications and submissions will continue to operate. Boon IP will also continue to operate remotely. Do let us know if you have any questions.