Protect patents and they will protect you

Getting your patent right is important for protecting your intellectual property. Picture: Contributed

SOME small firms’ most valuable asset is IP, says David Murray

British Summer Time has officially begun and those brave enough to venture out into their garden recently may have witnessed the first green shoots of the year start to emerge.

However, as members of the Society of Petroleum Engineers (SPE) met last week in the Netherlands to discuss cutting-edge technologies and developments in the field of intelligent energy – and with the global Oil Technology Conference on the horizon in Houston, Texas in May – companies in the oil and gas sector should also look to grow and tend to their intellectual property (IP) portfolio. This will allow them to exploit opportunities and mitigate risks in order to put their business on the best footing for the future.

For SMEs in particular, IP – which includes patents, trademarks and registered design rights, among other intangible assets – is often a company’s most valuable asset. Of these, patents are one of the most important and prevalent forms of protection for oil and gas SMEs since they can be used to protect a company’s innovative tools, equipment, processes and methods.

Not only do patents provide a barrier to entry to others looking to take market share, they are property rights which can be sold and licensed to generate revenue. They can help a company work with clients and suppliers to fully exploit a technology, particularly in territories where the company otherwise lacks the necessary resources or expertise to go it alone. They can also be used to attract and secure investment and are often key assets if looking to sell the company on at a later date.

A common scenario we encounter is when a company has developed or improved their equipment or processes but does not know whether to or how best to seek protection.

The first step is to seek advice as to how best to protect IP before disclosing the new technology, as any non-confidential disclosure of an invention before a patent application has been filed will, in many territories around the world, prevent valid patent protection from being obtained.

Considering IP at such an early stage need not be a major undertaking but it is vital to consider what actions can be taken to protect an invention as early as possible. In an industry which routinely involves collaboration and competition from companies across the world, it is important to develop a robust strategy for how best to protect new ideas and developments in technology across multiple territories.

This is particularly true of SMEs working with limited resources.

There is no “one size fits all” approach when it comes to how best to protect innovative technologies, which in many cases cover tools and equipment developed in one country but manufactured and run in another country (or countries).

It may simply involve a discussion of when and where to seek protection. For example, one route we take with SMEs is to use the International Patent System, often called the PCT route after the Patent Co-operation Treaty which established it. This means a single patent application can be filed which covers more than 130 territories around the world, giving a company 18 months to decide whether to go ahead with seeking protection in any specific countries.

The list of countries signed up to the PCT has grown over the years and now includes the likes of Saudi Arabia, a hub of oil and gas activity where patents previously had to be applied for separately, involving additional costs. This international approach benefits clients by allowing them to keep their options open as to where they will ultimately try to obtain protection and also keeps their competitors guessing.

Our work with a number of clients based in Aberdeen, around Scotland and around the world has shown how important it is to develop a strategy for capturing new developments if you are going to build your IP portfolio.

In the case of patents, this may come simply from recognising that they need not always be sought for inventions that represent a major leap forward. More often, the key to developing a patent portfolio is to capture and protect incremental improvements to existing technology which might otherwise be overlooked but which nevertheless provide a breadth of coverage. This makes it difficult for competitors to get a foothold in and around a particular innovative technology and can ensure that clients get the benefit from their investment.

• David Murray is a chartered patent attorney working in the cleantech, mechanical and engineering sectors www.marks-clerk.com