A report by PwC suggests UK tech firms are lagging behind the world in global patent filings – which is at odds with the buzz that’s been around the UK’s burgeoning tech and digital sector for some time.
Does the decreasing number of foreign patent filings mean UK tech is on the decline, no longer on the cutting edge, or somehow suddenly less relevant to UK Plc? After all, the prime minister has just pledged close ‘internet of things’ innovation with Germany, and made similar collaborative-sounding utterances when he was in China a few months ago.
No matter what, if more UK tech firms are to succeed and grow, they need to work harder to protect themselves from foreign competitors – whether that’s from pirated engineering, hardware and software designs, or blocking their future entry into potential international markets.
A fundamental mind shift is called for. It requires viewing foreign filing as more of a strategic marketing tool rather than a tedious and potentially expensive administrative chore.
This is perhaps what the makes Brits different to other leading economies. UK firms are more likely to consider the patenting of inventions barely off the drawing board as an ‘admin’ expense, to be dealt with at some stage further down the line.
Meanwhile, their rivals in countries such as US and China will be doing completely the opposite and get filing just as soon as they can. They’ve elevated IP management’s role alongside sales and marketing.
No business is an island
Perhaps it’s always been like this – a kind of cultural, ‘island mentality’ difference. But if it’s worth inventing, it’s worth protecting. A few thousand pounds spent wisely on patenting at the outset will ensure sales potential is fully maximised further down the line.
As soon as your invention is announced and public, you are exposed to potential copying. So, while at the outset, it’s perhaps understandable from the financial standpoint for fledgling businesses to view IP protection as a lower priority than R&D, sales and marketing, there’s really an urgent need to act on the IP stuff as soon as possible.
New ports of call
‘Self-service’ online IP management services make it much easier. Just as the web transformed many other traditional service businesses – think travel agents and bookshops - the Intellectual Property (IP) industry is seeing a sharp rise in specialist IP service companies. These focus on particular areas of the patent process with many falling into the category of ‘IP portals’, using the web to significantly lower clients’ costs, while increasing transparency and efficiency.
A key point about IP portals is transparency: many offer upfront quoting using fixed pricing schemes, so there are no surprises when the bill arrives - a big departure from the traditional law firm hourly billing model.
This is especially good to know when filing your patents abroad. The international patenting steps of PCT national stage entry and European validation are highly administrative, yet can be very expensive, especially if broad patent protection is sought. Traditionally, applicants have had to engage outside law firms to handle these parts of the process, but because foreign filing requires no substantive work, it can now often be more cost-effective to engage a ‘portal’ based company that specialises in foreign patent filing.
For tech firms in particular, there’s even more reason not to delay with their IP. The European Commission has decided to revise its rules on the transfer of technology across the European Union, coming into effect from May. The change ensures start-ups and SMEs can better protect themselves when licensing to larger companies by being able to terminate agreements more easily if their intellectual property is challenged.
Here are a few fundamentals to consider when it comes to a cost-effective and robust IP strategy:
- Think Marketing: View patenting from the outset as a means to block out competitors in domestic and potential export markets and so maximise sales potential
- While you may only operate in the UK today, if there’s a chance that you may someday manufacture in Asia, sell in Europe, or compete with a company in Australia. Failure to act within the established deadlines (which are often earlier than you think) can forfeit your patent rights abroad
- Reduce legal foreign filing costs by outsourcing IP to online foreign filing portals and specialists – this avoids spending unnecessary admin-related fees with law firms
- Leverage your patents to attract new investors. Investigate how to make your patents revenue earners by licensing them to businesses in other markets - this may enable a more profitable and secure alternative to building your own presence
- Offset patenting costs by deferring them over a period of time and by securing grants
- Prioritise the countries you want to file into and find out beforehand whether a country has patent laws affecting your product
- If filing into more than just one or two countries, consider filing a Patent Cooperation Treaty (PCT) application instead of filing direct via the Paris Convention. The PCT provides a unified procedure for filing into the 148 member countries and may offer a more cost-effective route
- After the PCT application is filed, the applicant has up to 18 months before filing into the individual countries where protection is sought, providing extra time to refine the invention, research its markets and look for licensees or buyers
- Jeff Shieh is Senior Patent Attorney at inovia.com, a leading foreign filing provider.