How to Protect your Bright Idea

Spyday. Not a typo, but the name given by some to the last day of a trade show. Typical spyday activities generally involve manufacturers conveniently ‘losing’ their name badges and business cards so that they can drop in on their competitor’s stands to see what they are up to and, perhaps, get a sniff of any new products or developments soon to be launched.

At this year’s Light+Building show in Frankfurt, however, spyday took on a more threatening tone with rumours that some manufacturers were using the day not to sound out future plans of competitors but to warn them that their existing ranges incorporated elements that infringe existing patents. When this was swiftly followed by news that Everlight Electronics had filed a patent infringement lawsuit against Nichia in the United States, it became clear that the time has come when companies are beginning to appoint sheriffs to police the new LED frontier. The penalty for any such Intellectual Property (IP) transgression could result in a company paying royalties or facing a costly legal battle. 

“The landscape for patents is highly populated in the area of LEDs because the development in the technology is being underpinned by developments in semi-conductor materials and material science” says Jackie Maguire, CEO of IP management business Coller IP. For that reason, manufacturers launching new products in the LED sector, in particular, need to check to ensure that they can launch their product without infringing someone else’s IP. “Very often people launch products without doing those checks and find themselves in a difficult situation where they might receive an approach from a third party highlighting the fact that the third party has IP which they should pay attention to,” says Maguire.

Before responding to any such approach – and preferably before even launching a product – Maguire recommends that a company checks its own situation carefully and in many cases this involves seeking professional advice. “What we do is understand what the company’s technology offering is about and then we overlay its features on the global IP landscape – this tells us who owns which patents around the world in the company’s technology space so we’d be able to say what the likelihood is of the company infringing someone else’s IP.”

The company uses software to scan all of the existing LED patents that exist in the marketplace. It then uses this to generate a landscape map which gives a snapshot of the industry. The company says it is also able to reverse engineer competitor products to see which IP on the landscape is relevant to that product.

Coller IP uses software to scan all of the patents that exist in the LED market and produce a lanscape map showing where the highest concentrations exist

Three areas

IP covers a broad range of creations, from new breeds of plants, goods from specific regions, such as Champagne, and even microchips. However, the three areas most pertinent to lighting manufacturers are patents, registered designs and trademarks. Innovative products or technologies can be patented as can improvements in the way an existing material is manufactured, or an LED lens is coated, for example; the appearance of products can have design protection; and brands or goods and services can have trademark protection.

If the rumours from Frankfurt are to be believed, then lighting manufacturers who spend time and effort designing and developing innovative products need to think carefully about protecting their IP to enable them to confidently rebut any rival’s IP allegations. “If a company comes up with a new technology that they want to protect so that other companies don’t copy it, then the way to do that is get a patent,” says Jason Boakes, a patent attorney at Secerna and a specialist in electronics and engineering. He says a patent will give a manufacturer a “20 year monopoly right”.

The process of obtaining a patent starts when a patent attorney writes a patent application. In the UK, a patent application is lodged with the UK Intellectual Property Office. A critical part of the application includes submitting what are termed “claims”, which is where the invention being protected is defined in words. Extreme care is needed in the choice of words so that if the patent is challenged, a court can read these words and come to a decision on what those words describe. “You need to define something that is different to what has been known in the world before (called prior art) but you don’t want to define it so specifically that competitors can make a little tweak to the product to get around infringing the patent,” explains Boakes. He says it can take typically four to six years to get a patent.

Third party components

Alongside filing a patent, manufacturers also need to pay particular attention to any third party components incorporated into a device before taking it to the market – something which is particularly pertinent in the OEM market. This is a complicated legal area and may involve negotiating a contract where a royalty is paid for each product into which the component is integrated or acquiring a licence to use the component for a specific purpose.

In addition to protecting an idea, IP can also have financial value on the balance sheet of a business and can potentially be another revenue stream if ideas or technologies can be licensed to other manufacturers. “It is important to understand where the value of IP might lie within a business,” says Coller IP’s Maguire.

Finding the right patent attorney is important if a manufacturer is to maximise the value of any business. To be effective, a patent attorney needs to understand what a business does, why the idea is important, and where and how a business wants to grow with its products. “We look to our IP advisors as another element in our design process, we are able to bounce ideas off them and, through keeping them informed, they are able to provide valuable insight in areas we may not have considered,” said one manufacturer exhibiting at Frankfurt. And of course the advantage of establishing a relationship with an IP specialist is that they will be able to better defend a product’s integrity if it is challenged, which could be useful next time Spyday comes around.