Long-term secondment reveals hidden patent potentialPosted on
A major international brewery required more effective management of its IP. The R&D department was developing new ideas at a rapid pace and the businesses was concerned that it could miss valuable patenting opportunities and potentially lose a lot of money – or its competitive edge.
The problem was that there were several R&D people working on developments in their brewing industry, but no in-house patent department to assess the results of the research and identify patentable inventions which were worth protecting. IP was at the forefront of the minds of the technical development team.
We were tasked with identifying opportunities to protect the investment in development work and to consolidate the ideas and inventions and identify which were potentially patentable.
Due to the sheer scope of the project, our solution was to second an attorney for one day a month, free of charge. It proved so successful that the secondment was extended for an impressive ten years, with our attorney running an in-house patent clinic and patent watching service.
Each day on-site, we met the director of technology and research for a 30 minute overview meeting, followed by several hours talking to the research staff to mine the work they were doing for IP potential.
Detailed reports were produced, with expert recommendations identifying which ideas should be patented and asking commercially relevant questions, enabling the director to quickly make decisions.
There were several occasions where we recommended not patenting based on a commercial understanding of the industry. For example, if an idea meant retro-fitting a technology to an existing system which would be hugely expensive to do in practice, so it didn’t make sense to spend resources protecting it – because no one would want to copy it anyway.
Meeting the R&D team on a regular basis saved the client time and ultimately money by streamlining processes, while being more efficient in terms of communication. Being on-site regularly enabled us to spot inventions and patent them – preventing the outside world from being able to copy them for free.