One of the hardest things a member of the patent bar has to do is to tell a client that his patent is not valid. That is particularly hard in the presence of the patent attorney. At first the advice is met with disbelief and bewilderment. Then looks of anger initially directed towards me and then towards the agent. Usually it is not the attorney’s fault. Often he or she had warned the client that that would probably be the case; but the client tells the agent to persevere anyway. And then when the envelope bearing the certificate of grant pops through the post, the client feels vindicated. Until, that is, someone infringes his patent. And that’s when I am, or somebody like me comes in. And then I have to tell the client that the tens of thousands of pounds that he may have spent on letters to the examiner, PCT applications and proceedings around the world in the national phase were probably wasted.
Much the same happens though to a lesser extent when an inventor receives his grant but nobody wants to talk to the inventor about his invention. That happens regularly and frequently because, as Lord Justice Jacob put it (perhaps a little unkindly) most patents don’t matter. Barker and Bissell put it rather more starkly in “A Better Mousetrap”: most patents are never worked and the few that are rarely cover their costs. Only a very small number actually make serious money for their inventors. When it finally dawns on the private inventor that the thousands that he spent on British, European and overseas patents will probably not make his fortune the inventor rails against his agent blaming the agent for not saving him from himself.
That is understandable but it is also very unfair to patent agents. They are not business advisers. Their job is to take their client’s instructions and to carry them out. Second guessing a client as to whether he or she is doing the right thing would be seen by many clients and indeed many patent agents as an impertinence. It would be resented just as much as a shop assistant who tells her customer that she looks ridiculous in the dress that she has set her heart on. Patent attorneys should warn their clients of the risks and costs and the scope of the available protection. They should tell them about all the options including legal protection for other intellectual assets that are important to the client’s business. But at the end of the day it’s the client’s decision and nobody else’s. The attorney has to assume that the client knows what he or she is doing.
Now why do businessmen and women and those who wish to go into business to make and market their inventions apply for patents? It’s not as though they are not warned. In his excellent supplement to “A Better Mousetrap”, “Patenting your Invention, the Ugly Truth”, Graham Barker writes at page 22:
- “Ignore anyone who says you must patent your idea. They’re much more likely to be wrong than right. And ignore anyone who says you must patent your idea straight away. They’re dangerously wrong. Read the warnings in A Better Mousetrap.”
A few lines later he adds
“Don’t regard a patent as the best. Regard it as the worst. Think of it as a danger and distraction you don’t want, to be engaged with only as a last resort.”
And Graham Barker is not the only one who spreads this message.
So why don’t inventors take note? Part of the problem is that Business Link, regional development agencies, business angels and venture capitalists tell inventors that patenting is important and from a potential investor’s perspective it often is. But the main reason is lack of understanding of the patent system and how the intellectual property system actually works. Patents, design rights and other intellectual property rights are tools to strengthen a business’s competitive advantage that a patent agent will help a business acquire but choosing the right tools at the right time is a different service altogether.
There is as the insightful American writer Jackie Hutter has noted a new profession of intellectual property strategists coming into being
“IP Strategists are a new type of Intellectual Property advisor. We combine business acumen with IP knowledge to provide business-focused advice. An IP Strategist does not advise you to spend your money on obtaining IP because you can, but because you need to…………….. an IP Strategist first listens to you to determine what your business goals are and how you wish to achieve them and only then will the IP Strategist suggest that you move forward with obtaining cost appropriate IP protection.”
The job of intellectual property strategists is to advise businesses how they can maximize the benefits from their intellectual assets. They do that in a number of ways:
- “carrying out intellectual asset audits, that is to say identifying potential revenues from licensing, consultancy or assignment as well as legal hazards such as infringement claims by third parties;
- choosing the optimum legal protection for an intellectual asset having regard to the owner’s business objectives and resources working with patent and trade mark attorneys as and when necessary and specifying the advantages that they need to protect;
- helping businesses plan for the enforcement or defence of their intellectual property by working with intellectual property insurers and lawyers;
- valuing businesses’ intellectual property;
- negotiating licences, manufacturing and distribution, outsourcing, franchising and other agreements; and
- advising businesses how to use intellectual property to further their business plans.”
Big companies and institutions have always done this for themselves. Small businesses need intellectual property strategists to do this for them.