Appendix
Factors to consider when evaluating whether to pursue patent protection for an invention:
Innovation
- How innovative is the idea? Just an engineering variation or truly innovative?
- Is the idea useful in practice?
- Is the idea technical (does it solve a technical problem) or is it more related to administrative or business considerations?
- Does the idea have real world feasibility, including cost?
- Is it robust and will customers want it?
Product Value
- What is the size and location of the existing/potential market for the product?
- What is the commercial value of the invention to the business?
- Is it in a strategically important area?
Patent Value
- Does the product line already have patent protection? If so how strong is it, and how many years of protection are left?
- How competitive/litigious is the market?
- How relevant is the known prior art?
- What is the lifetime of the product? Patents last for 20 years and typically take 3-5 years to grant.
- How easy will it be to detect infringement by competitors? Conversely, is it preferable to maintain the idea as a company secret rather than seek patent protection and publish details to the competition?
- Is the idea clearly owned by you? Has there been a collaboration, and was ownership of intellectual property agreed?
- How easy will it be for competitors to workaround the patent if granted?
- Are there secondary reasons for wanting patent protection, e.g. Patent Box tax provisions, marketing value?
About the author
Robert graduated from Glasgow University with a BEng in Electrical and Electronic Engineering, and followed this with a PhD in Bioelectronics, researching electrode interfaces for recording signals from in vitro neural networks.
Robert has extensive experience across a large number of technical areas. In his early career he worked in-house for Nokia Mobile Phones working on 3G and 4G mobile telephone systems. He continued in this field for other clients, moving onto 5G systems and other wireless and Internet-based communication systems. Other related areas of interest include computer security and very high speed manufacturing. More recently, Robert has worked on technologies more closely related to his academic background, and has advised a number of exciting start-up projects in the areas of bioelectronics and DNA analysis, both medical and consumer focussed. Robert also leads the firm's engagement with the motorsport industry and is an active participant in the Motorsport Industry Association.
Robert takes a pragmatic proactive approach to his work, avoiding rigid patenting strategies and preferring to tailor his approach for each client based on a thorough understanding of where the client is trying to get to. Robert sees the education of his clients as being critical to their success and is happy to provide either formal or ad hoc in-house training. He considers patents in the wider context of a client’s IP, advising on related know how, designs, trade marks and copyrights, knowing when it is appropriate to involve colleagues with specialised technical or knowledge in certain areas. Robert has had success in rapidly building patent portfolios for his clients in order to provide a solid basis for company valuation and investment.
Robert is Marks & Clerk’s partner in charge of the firm’s new and unique offering for the start-up community contact him directly via our website www.marks-clerk.com.
“We view Robert as an extension of our team and he supports very diligently and responds swiftly. He understands our business and technology very well and is able to turn around drafts with minimal inventor input and clearly identifies the kernel of the invention.”
- IAM Patent 1000, 2022
“Bridging the gap between the life sciences and high-technology spheres is Robert Lind, a bioelectronics PhD who also has deep telecommunications know-how…always goes the extra mile to fully understand the technology and the client’s long-term business strategy.”
- IAM Patent 1000, 2021
About Marks & Clerk LLP
Marks & Clerk is a leading international intellectual (IP) firm and home to experts that are on hand to provide a distinctive and disruptive service offering that is highly tuned to the requirements of the sector.
Over the years, we have worked with numerous tech start-ups and spin-outs, as well as with entrepreneurs – helping them identify, protect, enforce and maximise the value of their intellectual property. Many have secured investment or succeeded with other commercial aims as a result of our work. We work closely with our clients to consider the steps that need to be taken to manage growth and avoid IP assets slipping through the net.
We are incredibly proud of our track record but we never sit still for long. Once again, we have listened to the needs of the market and this time responded with a brand new offering for the start-up and early stage community that is unique to Marks & Clerk. On a case by case basis, our team of experts will assess the requirements of the world's most innovative, promising, high-tech start-ups and invite them to make the most of resources and our unrivalled breadth and depth of IP expertise - at a competitive, transparent cost.
Get in touch. Our collegiate way of working means easy access to the relevant experts. This in turn means we are able to offer the same agile approach as smaller IP firms - while delivering the expertise of a global player. To speak directly to the partner in charge of this new offering, please contact Robert Lind via www.marks-clerk.com.
