I had a discussion with a potential new client a few weeks ago. He was very keen to engage me to draft & file a new patent application around his invention, and to press that application on towards grant. We had a long chat, and in the end I explained to him why this wasn’t a good idea.
His was a type of invention that I’ve seen a couple of times, and it isn’t suitable for protection by a patent. Not because it isn’t patentable – his idea was new, inventive, technical, and so on. But a patent wouldn’t help him. It reminded me of the patent application I saw many decades ago now, while in training, which taught me about this kind of situation.
It was part of a large portfolio of patent applications, which we had inherited from another firm when the client transferred its work to the firm I was then at. They made a consumer product (client confidentiality prevents me identifying it!) which was made from a natural harvested raw material via an industrial process. The quality of the final product was (obviously) very important to them, and some of the natural variations in the raw material could – if they made their way into the final product – create a very obvious quality issue.
They had invented an extremely clever way of sifting the raw material just before its incorporation in to the final product. The machine which they had designed had a novel structure which automatically and quickly filtered out the shreds of material which were not wanted and disposed of them, leaving just a stream of high quality, highly uniform material. This could then be fed into the manufacturing process to yield a consistently high quality final product.
My then boss and I were visiting the client to run through their portfolio, update them, and get their instructions. We reached this application, and to my surprise, my boss opened with the question “Why did you file this application?”
The client was equally non-plussed. Vague and uncertain comments came back, along the lines of “errr, it was new? And useful?”
My boss asked the killer question - how they would tell if their competitors were using the invention? They had no answer. There was no tell-tale trace in the final product which would be there as a smoking gun. Unless they were going to hire James Bond to break into all their competitors’ factories and report back, there was no way they would be able to tell. And anyway, Mr Bond’s report would probably not be admissible in court. So, he explained patiently, they would never be able to enforce the patent, because they could never start an infringement action. They would never have the details of an instance of infringement that would entitle them to issue proceedings. So the patent would have no value.
What the patent application would do, however, is publish the details of their invention for the world to read. All of their competitors had been given full and detailed drawings of the machine and an explanation of how it worked. With hindsight, that had probably not been a good move.
I gave the same explanation to the new client, and he saw the point immediately. We talked about sensible precautions for keeping the essential elements of the idea confidential instead – that won’t stop a competitor if they work it out for themselves, but at least it doesn’t gift-wrap the idea and drop it in their laps.
So we didn’t see any work come out of that meeting, but we don’t mind. There’s now another person out there who knows that we really will give the advice that best suits the client’s interests, not our own. To me, that’s a win.