Advising on Intellectual Property Rights

Jane LambertJane Lambert

12 July 2010

I was asked by a business support agency to supply “assistance with design registration and trade marking” to an individual inventor who had invented a safety device for basic industrial training. I spoke to the inventor by telephone and later saw his wife in conference.

The inventor told me that he had attended a patent clinic where he discussed his invention with a patent agent. The patent agent advised the inventor that it would not be possible to apply for a patent for his invention because it lacked novelty or inventiveness, but it might be possible to register the product as a registered or registered Community design.   Trade mark registration also seems to have been discussed because the inventor emailed some searches that the attorney had procured for the company.   I explained to the inventor’s wife in conference briefly the nature and purpose of patents, trade marks and registered designs and asked the inventor’s what she hoped to gain from trade mark registration.    Her reply suggested that someone had led her to believe that trade marks and design registrations were some sort of substitutes for a patent.    I asked her about her plans for marketing the invention.   She replied that the company had not yet even made a prototype and that she and her husband were not sure how they should set about getting one made.

I advised the inventor in writing of the costs of patenting and enforcing patents. I repeated my oral advice that patents, trade marks and registered designs protect different things. I stressed that trade marks, registered designs and patents do not bring brands, designs and technology into existence.   They simply prevent others from exploiting those advantages without the owners’ consent once they have been created.  I also advised the inventor on design rights and the law of confidence and invited him to consider intellectual property insurance.

Before they spent any money on trade mark or registered design protection I urged inventor and his wife to find out whether the device was as good as the inventor said it was, whether it could be made at a price that customers might be expected to pay and who, if anyone, would be willing to buy it.   If the answer to any of those questions was no the invention would never be made and there will be no need to protect it.  I introduced the inventor to several product development consultants who could use computer assisted design and rapid prototyping technologies to make an actual or virtual prototype and test it rigorously.  I added that they might be able to help the inventor to develop his idea further. Both consultancies were used to dealing with inventors with low budgets and that they had good contacts with manufacturers here and in China.