Everything you need to know about patents and how to get one

In this episode, Legislate meets Robert Lind, patent attorney and partner at Marks & Clerk. Robert shares how he became involved with patents, what can be patented and why you might apply for one. This episode is a must listen for all startups and businesses considering patents as part of their strategy.

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​Charles Brecque: Welcome to the Legislate podcast, a place to learn about the latest insights and trends in property, technology, business building and contract drafting. Today we have a special guest Robert Lind, patent attorney and partner at Marks and Clerk. Robert, welcome to the show. Would you like to introduce yourself and tell us a bit about how you got involved with patents?

About Marks and Clerk

Robert Lind: Hi Charles, thanks for inviting me to speak today. Yeah, I'm Robert Lind, a partner at Marks and Clerk, which is quite a large international firm of patent and trademark attorneys. I am based in our office in Oxford, which is on the science park. So a bit of a tech hub in Oxford. Marks and Clerk is interesting because we've got a very long history, so quite an old firm, about 130 years. A bit of good background on Marks and Clerk is that the Clerk in the Marks and Clerk was the inventor of the two stroke engine. So we have a bit of an automotive background and we were founded by inventors, not by a lawyer.

My own personal background. Like all patent attorneys, I have a technical background, so my background is electronics, electrical engineering. I did a PhD in bio electronics, which I won't go into at the moment. I started my career in London with a private practice firm. And then I worked for a while in Finland with Nokia mobile phones in their in-house patent department. Then I returned back to the UK to Marks and Clerk in Oxford, where I've been for just over 20 years now. Working with an exciting variety of large international clients and high-tech startups, both local and in other areas of the UK as well.

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What's been you favourite moment so far?

Charles Brecque: That's quite a long career and quite a diverse range of experiences. What's been your favourite moment so far?

Robert Lind: Favourite moment? It's hard to pick, maybe working for Nokia mobile phones was interesting. Because when you work in house for a company, you see a very different side to IP, into patents and you realise that they're not everything.

They contribute hopefully a small part to the success of a company but you have to place it in perspective. A project that I've found very exciting is one that I'm currently working on, which is with a spin out from Imperial, which is called DNA nudge, which is a very exciting med tech lifestyle company that has some very exciting technology. So I find that project quite exciting because I've been with that from the very beginning through to product launch, through the challenges of COVID, through to a large fundraising exercise and hopefully onward, to big success.

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What do you wish you'd known before becoming a patent attorney?

Charles Brecque: That's great. And you've been in this industry for a long time. So what would you wish you'd known before entering the world of patents?

Robert Lind: I suppose from a personal point of view it's quite an intense profession. It probably suits the introverts. A lot of detailed work. I suppose that's what I would have liked to know. Not that it would've changed my mind if I had known what I was coming into, but it'd be good to know what you're getting into.

I think nowadays, with the internet and the resources that are available. It's very easy to find out what a profession is all about, but I joined the profession pre-internet when there weren’t really many resources around to find out what's involved in this job.

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How has the internet affected the world of patents?

Charles Brecque: And I imagine the internet has had quite a big impact now that everything's on the web. So how does the internet impact the likelihood of an application being granted?

Robert Lind: I think that there's been a huge impact in the ability to search prior art documents.

 As you Charles from your own experience, when you file a patent application the patent offices in the different countries perform a search to see if the idea is novel and inventive. And when I started in the profession 30 years ago, the searching was essentially manual.

It was examined as going through printed publications lists of documents, and that was obviously very restricted in what they could search. Nowadays there's so much resources on the internet to search, not just specialist databases accessible to the patent offices but a lot of very good freely available databases to search.

So you really can access an awful lot of information in your search. So that's always a good place to start, before you file an application is to do a little bit of searching yourself and find out what's there. Even if you don't find a killer piece of prior art, which is good and you hopefully will find some documents that will help you better understand what your invention really is rather than what you think it is.

Having said that whilst the tools for searching have got much better, much faster and more efficient perhaps there's also been an explosion in technology. So there's even more out there to be looking for. So the internet definitely has changed the patent world.

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Why should a startup consider filing a patent?

Charles Brecque: If we take a step back. If I'm a start up business owner, considering a patent. Why should I invest the time and resources in an application? What are the benefits and how do I know it's right for me?

Robert Lind: You're absolutely right to ask that question at the beginning, because patents often are not right for you.

So maybe it's worth looking at that first of all. Why not to file an application? The cost it's an expensive process .It can be a very expensive process. It's a requirement when you file an application that you eventually publish and disclose the idea and sometimes that might not be the best route.

You might be better to keep your secret sauce particularly if you've got an idea that actually won't be patentable in the end. If there's a very good chance that your idea is not going to be patentable it might be better to keep it secret and not file.

I think for an early stage startup company I think whilst, yes, you want to get a monopoly on the technology, the principle driver, I think is probably around fundraising that investors will want to see strong IP, which usually means patents for a tech company, patent applications, granted patents in key jurisdictions, like the US and Europe that can add a lot of value to your company.

And it can be essential in raising investment because investors are not going to put a lot of money into a tech startup if there is no barrier to entry for a company. So I'd say investment yes and in the longer term, it's about building up a portfolio that will allow you to defend against competition, therefore increase the price at which you can sell your own products and services, because you have an effective monopoly.

The other reason you might have patents in the long term is for cross licensing purposes. So you might, for example, be in a situation where somebody else threatens you with patent infringement and perhaps a way out of that problem is to cross license your own technology. So there may be a solution there to problems with third party IP.

I think that covers it all. Really. It's fundraising. It's defensive, it's cross licensing and offensive at the end of the day as well, offensive in terms of going out to your competitors for infringing your IP.

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What makes an idea or an invention patentable?

Charles Brecque: That's very helpful. One thing that you mentioned at the beginning is your idea needs to be patentable. What makes an idea or an invention patentable?

Robert Lind: What makes an invention patentable? It's got to be novel, so it hasn't been done before. So novelty is a kind of bare requirement. It's just something different. If I compare it that way, inventiveness is a slightly higher hurdle than novelty. It's not just different, but it's different in a non-obvious way.

So it's got to be, not obvious. That's obviously a very subjective challenge. It's a question that's asked to a skilled person. So if you think of a notional skilled person in your area of technology would this have been obvious to that person? That's the question you've got to ask. It's a fairly low barrier.

We're not talking, Nobel prize winning inventions here. It just has to be something not obvious, which is a fairly simple test sometimes. The other key issue, I think is, it's got to be a technical innovation. So generally you can't patent business methods.

I always think a very good example is if you think back to when banks or building societies introduced, say something called an offset mortgage, if you know what an offset mortgage is, it's an idea of moving your funds from your bank account into your mortgage when you have excess so that you can reduce the interest payments on your mortgage.

It's a very clever idea. But it's a business method. It's not technical, therefore it's not patentable at that level. So those are the kinds of things that are a bit difficult. People often Latch onto the idea that software isn't patentable either. And in some ways it isn't, but I'd say most practical applications of software is patentable, because it has a technical application.

You can't patent software at the level of just an abstract piece of code that does something like a bubble search or something like that. But as soon as you apply it, for example, in terms of image processing, Or controlling a machine, for example, a robot, then the software does become patentable.

So there's a few gray areas there, but generally I'd say the key things are, is it novel? Is it not obvious to the skilled person? Is it technical? And if you can answer those three questions, then you've probably got yourself a patent.

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What are the key agreements you interact with the most through the patent application process?

Charles Brecque: That's really helpful. And throughout the patent application process, what contracts might an inventor or a patent attorney interact with during the process?

Robert Lind: Generally when a company comes to us, they've usually already got some rights to the invention. And that's very important. It's very important obviously that the company that is applying for the patent owns the invention. But the law, the UK law, certainly states that the inventor is the first owner of any invention. So you've got to find a way to get the rights in the invention to patent or it could be a trademark.You've got to find a way to get the rights from the inventor or the creator to the company. So generally that would be by way of an employment contract. So it's common for employment contracts to have a term that requires the ownership of any intellectual property or inventions to be transferred to the employer.

Sometimes there might be a contractor involved or a consultant involved who's invented it. So in that case, there is no contract of employment, but there might be a term in the consultancy agreement. Or it might require a specific assignment which transfers the right in the invention or the other right from the creator to the company.

So generally at the start, there could be an employment contract, consultancy agreement, some other form of contract or a specific assignment. And then as you go on through the process there may be subsequent transfers. So there could be a transfer of the IP asset from the applicant company to some other company that could be a sale.

That would be another assignment required. There could be a change of name. It's very common for companies to change their names to go along. But that's probably less of an agreement and more just of a company record that we would require to record the name change.

Then. Becoming more complex. You've got things like license agreements. So you could, for example the owner of the IP might decide to license it out to a third party. So there will be a license agreement coming along there. I'd say those are the key agreements that I see coming across my desk.

Charles Brecque: And with those key agreements, are there any specific clauses that you look out for, or any specific issues that can cause some friction in the process?

Robert Lind: In thinking of an employment contract, there usually would be an IP clause in there, but that has to be a kind of fair and reasonable clause.

So for example, if you are employed as a, let's say an app developer for a company developing some software app then it might be reasonable for the employment agreement to require you to transfer any inventions in the field of that software app from the developer to the company. But it would be unfair for example, if the inventor invented. I don't know, an electric battery in his garage at home. Then it would be unfair for the employment contract to transfer rights to that unrelated invention to the company. So the agreements like that have to be commensurate with the role of the employee. if we think about assignments then there has to be a consideration.

You're transferring an asset from one party to another, there has to be some consideration given in return, and that could be a monetary sum or it could be some other considerations such as an employment, for example or a consultancy agreement. It could be the quid pro quo for transferring the asset license agreements. License agreements are more complicated beasts so, just to give you a couple of examples in terms of if you're licensing a patent, for example then there are issues to think about primarily what are the territories that you're licensing. So you may have a patent in many countries but you may grant somebody a license under that patent to use the invention only in certain countries.

And you may reserve other countries for another licensee, or you may reserve those other countries for yourself. You may do an operation there. So one way to carve up a license is geographically. The other way to carve up a license might be in terms of its application. So for example, the guy that invented the electric battery. He's quite entitled to license one party to use that electric battery in a car and perhaps he may license another party to use that battery in let's see, garden equipment tools, or drills or whatever, domestic tools.

So as well as carving up a license geographically. You can carve it up in an application sense as well.

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What would make a patent application impressive?

Charles Brecque: That's very insightful. I'm conscious that we've already taken a lot of your time. So I'm going to ask a tweaked version of our closing question that we ask all our guests. So if you were reviewing a patent application today what would impress you?

Robert Lind: If I was to read a patent application that I had written myself then. I think what would impress me is it's clear. It's concise. I want to read it and almost be excited reading it rather than is the case with a lot of patent applications, which people will probably realise can be very dry and repetitive and quite dull.

So I think if you've got a patent application that reads really well, like a bit of a story. It's quite interesting. It's quite exciting. I think that's really good because I think when you file a patent application, it goes in front of a patent office examiner. He goes through a lot of patent applications and if he's actually got an interesting read you're much more likely to get a good result at the end of it than if you've got just something very dry that he finds it very hard to go through.

Charles Brecque: At legislate, we definitely try to make our contracts clear and easy to understand, but in terms of the story, there's only so much of a story you can tell in a contract, but I imagine that's a great challenge we can give to our legal team to try and make our contracts more of a story to make them easier to read for our users.

Robert Lind: And that's hard with a legal document. It's very hard to make it an exciting read, a blockbuster. Yeah.

Charles Brecque: We like challenges at Legislate! Thank you very much, Robert, for sharing your background and insight into the world of patents. I'm sure you're going to help lots of startups who listen to the show. Thank you for being with us and hopefully we can have you on again.

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