Is there any point in protecting my invention if patent enforcement is unaffordable?

Patent enforcement is often a big concern for a lone inventor. I often hear “Why patent if you cannot enforce it?" Patents are expensive, there is no doubt about it. Back in 2011, Hargreaves did some research for the UK government and found that on average legal and patent attorney fees required to get a UK granted patent were in excess of ￡13,000 and this is payable in addition to the official and renewal fees. If you require a patent in the UK, the USA, a few large European countries and maybe somewhere in Asia (by no means widespread global coverage) then you are looking at bills which will total well in excess of ￡100,000.

Patent enforcement

The costs do not stop there. If you are infringed, you have to bring legal action with all the risks and costs that involves. Patent infringement in the UK is a civil matter rather than a criminal one so the state is not going to bring a prosecution on your behalf, patent enforcement is down to you.

I often hear an argument from lone inventors that goes something like this:

“It is not worth patenting because the big companies will just copy me anyway and I cannot afford to enforce my patent in court. My rights will be ignored. I might as well just press ahead without patent protection"

This, I would argue is misguided for at least 3 reasons and here is why.

1. Your patent stops the big firm getting a patent themselves

My experience is that patents do act as a deterrent for big firms. It isn’t only about patent enforcement, but also whether they can get patent protection themselves and so stop their large competitors coming out with competing products. If a large firm illegally take a patented idea from an inventor, they have no prospect of getting a patent themselves (as the inventor’s patent will be counted against their application as prior art during the prosecution process). This makes commercialising this idea a lot less attractive for the big firm unless they can get rights to the inventor’s patent.

When I worked in the R&D department of a FTSE 100 company, the first thing we would do when a new idea was generated by one of the team would be to search the patent database for prior art that would prevent us from getting a patent. If any prior art was found, we just moved onto the next idea. At no point, was a check made as to whether the patent was granted or whether it was owned by a large entity who could sue us. Patent enforcement was not our concern. The patent application’s mere presence in the database was enough to stop any further work on the idea. The company would struggle to get protection itself and so we simply moved on.

2. The company will compare costs of dealing with you to that of infringing

The company will make a commercial decision and this will often lead to the decision to license or acquire the patent from the founder rather than stealing the idea. If the company behaves properly and deals commercially with the inventor they get a number of advantages for the price that they pay:

• they get monopoly rights themselves. As alluded to in the last point, by gaining rights to your patent the company can enforce it against any of their competitors who try and also use your idea;
• they can gain access to the work the inventor has done already including their know how. The inventor is likely to have done a lot of work on the idea already and may have secrets, tips or tricks which make it all work much better. By engaging with the inventor the idea has the biggest chance of success. If the inventor has done a lot of work on it already, or written a lot of code, this would have to be reproduced at extra cost if the company decides to infringe; and
• reputational risk. The company are not risking their reputation being harmed either by legal action or just by the inventor naming and shaming on social media and the press. Loss of a company’s reputation can be very expensive for a large global brand.

3. Your patent may be enforced against them

Wilfully and knowingly infringing someone else’s patent is a risky business even if the patent owner is small and not well funded at the time the infringement begins – patent enforcement is a continued risk. The company infringing will never be sure that their investments in this technology will not be stopped should the patent be successfully enforced. There are a number of ways that this could happen:

• The inventor may find a way to enforce their patent.  The costs of bringing an action in the UK Intellectual Property Enterprise Court (IPEC) – the small claims court for IP issues – are capped at ￡100K (￡50K for defendant and ￡50K for plaintiff). This makes obtaining insurance relatively easy – there was an insurance policy that paid for bringing legal action in IPEC for registered designs with premiums of about ￡800 per annum – expensive but not impossible for a long inventor. There ae also a number of IP solicitors, particularly in the US where the rewards can be higher, who will take on the case on a no win / no fee basis.
• The inventor may sell their patent to someone who can enforce it. Patents are a form of property and as such can be bought and sold. If there is a clear case of infringement, the patent becomes a lot more valuable with both the infringer’s competitors and specialist “Non-practising entities" (who specialise in bringing patent enforcement actions against large firms) and are often in the market for such assets. As a lone inventor who owns a clearly infringed patent, you have the option to go to the infringer’s biggest competitor who may be very happy to purchase the patent off you to stop their competitor commercialising this idea and undertake patent enforcement themselves.

Protect your idea or you have no options

Without a patent, the inventor is definitely absolutely and completely powerless to stop someone else from stealing the idea. With a patent, the inventor has options and often the outcome is successful. It isn’t all doom and gloom in the patenting space for the small player. It may therefore be worth considering starting the patenting process, even if it is expensive and patent enforcement appears daunting.

Copyright ? 2020. Ian Goodyer. All rights reserved.