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News
6 November 2009
Philip Coyle Advises on an Innovation Case Study
Philip Coyle, European Patent Attorney with FRKelly, advises on the Innovation Magazine case study Sitting on A Great Idea.
Luke has made great progress in bringing his idea to a prototype stage. With the ageing population demographics around the world, products for the elderly will likely find great demand in the years ahead.
Luke has already carried out some general searching on the internet and has not found any product as good as his own. However, it is important to carry out a patent database search to make sure the product has not been patented before. There is a large volume of patent applications filed in relation to the automotive industry, particularly in the United States, and the US patent database is a good place to search.
The second aspect to clarify is the question of ownership. It seems the Italian company did not consider the development could belong to them but this needs to be clarified.
Generally speaking, if someone is employed, for example, as a product designer in a company, any products they develop in the business area of the company would normally belong to the employer. This would need to be clarified in relation to the legislation in Italy.
If it is established from the patent search that the product is new, not patented before and Luke has clear title to the invention, he can file a patent application to establish a date for the invention and can then disclose the invention in the market place.
The first patent application would give Luke a period of 12 months to carry out further market research. This period is important because at the end of it, Luke must decide whether or not to extend his basic patent application internationally.
Since the product has global potential and since the market in Ireland is small, international patent protection is essential. In commercialising the product, Luke has the possibility of setting it up to market the product or finding a licensee, in other words, a company which will take on the product and license the patent rights and in return would pay Luke a royalty for each unit produced.
A licensee would also look after the costs of international patenting and enforce the patents against anyone who copied the product.
It is important for Luke to realise that if his passion lies in product design the route of licensing the patent rights to either his existing employer or to another company who may be interested in manufacturing and marketing the product may well be his best option - giving him the opportunity to continue in his existing career.
Case Study in full and expert's advice
Irish Times Innovation Magazine, November 2009
