Without a knowledge of what patents do, it’s hard to know exactly what they can protect, how they can benefit your business and when you should get in touch with a patent attorney.
This short guide is indented to be educational and explain what a patent is and the process required to secure one — and while much of this is relevant for all product and process development, it contains examples specific to the chemistry, materials and battery technology sectors.
What is a patent?
A patent gives its owner the exclusive right to commercialise a new concept. The important part of a patent are its ‘claims’, which define the invention as a product, process or use.
Is it worth the cost and effort it takes to file a patent application?
A patent affords legal protection for the time, effort and money spent developing a new product or process. Without a patent, a new concept is simply gifted to your competition.
As an asset, a patent may be borrowed against, licensed or sold. Some businesses are bought and sold exclusively on the commercial value of their patents.
What can a patent protect?
Since a patent protects the inventive concept behind a product, it may cover a new product, method or process, or a new use for a product.
Examples of different types of invention in the battery sector that could be protected with a patent include:
- Battery cell components (including the battery pack, connectors, thermal management system, battery management system, hardware and software)
- Cell components (including the material composition of the node, cathode, films and coatings, electrolytes and solutions, separators insulators and conductors, and all intermediate and associated cell components)
- Methods of operation of cells (including thermal management, performance optimisation hardware and software, diagnostic or performance monitoring software architecture and processes)
- Upstream or downstream operations and processes (including cell/battery manufacturing processes and downstream recycling, as well as second-life modifications)
We would never enforce a patent so why bother filing patent applications?
The most common reasons for pursuing patent protection include:
- The deterrent effect — being notified of the existence of a granted patent can be enough to stop competitors from copying your concept.
- Opening new revenue streams — for example, through licensing royalties.
- A defensive move — to prevent competitors from protecting the same concept.
- To increase market position — through exclusive rights, you’re able to prevent others from commercially using your patented invention, establishing yourself in the market as the pre-eminent player.
- To attract investment, funding and collaboration — a patent portfolio can provide security and reassurance for potential investors or shareholders, as well as demonstrate that the invention in which they are investing is unique.
- For marketing and status — by creating a positive image for a product and demonstrating cutting-edge technology.
- To significantly increase company value — a patent that protects a commercially valuable concept can be worth a significant sum.
- To enhance R&D — having an R&D development policy that includes patents demonstrates a well-organised business approach, enabling strategic decision-making and preventing the ‘gifting’ of R&D efforts to competitors.
- To save costs — the UK Patent Box scheme grants a potentially significant tax reduction on worldwide profits related to a product that is covered by a UK or European patent.
How ‘new’ does a development or concept need to be for a patent?
The majority of patent applications are focused to advancements and improvements on existing products and processes. These days, it’s very rare for a patent to relate to a completely new product or process.
How do I know if a new development is patentable?
Compare the new development with what you consider to be the ‘closest prior art’. This could be a known product or process in the market, an existing patent or an academic publication.
If you can identify one or more features of your development that are new when compared to the prior art, then the potential for a patent exists. The patentability of a concept is increased significantly if the new feature provides a technical advantage over the prior art.
One example would be an electrolyte solution that has a generally standard chemical composition but differs by including a new additive to facilitate ion mobility or charge transfer between electrode and electrolyte. A patent focused to this electrolyte containing the additive would be suitable for patent protection. Further subsidiary features that would be relevant for the patent could then include the additive concentration, its specific chemical form, optional functional groups, etc.
To identify the closest prior art, a pre-filing patent search is often beneficial. A free, easy to use patent database is Espacenet. The database has a variety of search criteria including keywords, applicant or inventor name and patent classifications.
When should I file a patent application?
In most countries, patent rights are awarded on a first to file basis, so filing early is recommended. Since a valid patent must relate to a new concept, if your concept has already appeared in the public domain (for example, a product was sold, advertised for sale on a website or disclosed fully to any third party without an NDA) then you will likely not be able to obtain valid patent rights. A patent should therefore be filed before any public disclosure.
What is the best approach to patents for an SME or start-up?
Even companies without a huge budget for protecting IP should consider putting in place an IP policy. This should include some basic guidelines, such as:
- Centralised monitoring and recording of new concepts as they’re generated — for example, by technical sales staff, R&D team members and management. Simply recording the date, inventor name, closest prior art and an outline of the concept is a good starting point.
- Being aware of the patent strength of your competitors — this may involve a regular ‘patent watch’ to understand the size and strength of any patent portfolios that may impose commercial restrictions on your business or carry an infringement concern. Being aware of new patents filed by your competitors gives insight into their R&D initiatives and future direction.
- Employee incentives — if building a patent portfolio is important, consider incentivising employees to invent by offering a limited reward (remuneration) if their idea becomes patented.
- Generational filings — to try and file a patent for all new lines of development starting with a first-generation concept and following with further patent filings for second and third generations, etc.
- IP ownership considerations — to ensure that you have ownership of any IP rights that result from collaborations with suppliers, customers and other third parties. It’s always recommended to have collaboration agreements in place (that include IP ownership clauses) before any work begins.
Get in touch
If you’re considering filing a patent or establishing an IP strategy, get in touch with us.
Speak to our attorneys to find out more.