Curb your enthusiasm

'When the money rolls in, the inventor is rolled out.' So says Trevor Bayliss, the inventor of the clockwork radio.

At a time when the UK government has just published its 'blueprint for technology', indicating it is giving serious consideration to streamlining IP law in the UK, it is perhaps an appropriate moment to look at the role of the commercial lawyer acting for an inventor.

The first step will usually be to evaluate, with your client, the underlying concept or product, which may be at a varying stage in development. This is more than a simple academic exercise which requires a degree of commercial skill and expertise.

The next task will be to explore the background to the invention so one can establish beyond doubt that the inventor has all the necessary intellectual property rights vested in him absolutely. It is a highly risky exercise to move forward until that step has been conclusively resolved otherwise one is simply pushing a problem into the future which can come back to bite the client.

In many cases the client will be seeking advice about a product which he has developed in conjunction with another, perhaps while in employment or while working in a partnership or with a sub-contractor. It is essential to drill down to establish the true ownership of the concept.

Assuming this particular hurdle has been overcome, the next stage is to identify the extent of the intellectual property rights which exist in the idea and see how they can be improved. The greatest fear is always that the inventor's enthusiasm has run away with him and he has already disclosed his ideas to a third party before seeking advice '“ which in the case of a patentable idea may prove fatal.

Introducing objectivity

Hopefully there's been no disclosure when the client first seeks advice, and to protect the position it is important that a simple short nondisclosure agreement is prepared. Working closely with a suitable patent agent or appropriately experienced and qualified licensing practitioner at a very early stage has considerable merit.

There is a double-edged problem because inventors will be reluctant to incur significant professional fees to protect their IP rights if they have limited resources or if they are uncertain as the commercial exploitability of their ideas; hence the recommendation that discussions with a suitably qualified licensing practitioner are held at an early date to establish the commercial viability of the product.

Moreover, that may help to put matters into perspective and to introduce at least a degree of objectivity which may otherwise be lacking in the inventor's mind '“ many inventors believe they have developed something which will bring worldwide success, but which in reality has little chance if any of commercial exploitation.

Evaluation with an inventor of his idea or concept needs to identify all the potential IP rights which may be available, whether by way of patent application, registered trademark design rights or otherwise. As a first port of call the UK IPO website provides a useful amount of information and guidelines for the practitioner who is not as familiar as others with the concept of protecting IP.

Tread carefully

There has been considerable discussion in recent years as to the credibility and integrity of commercial providers of licensing expertise, and, when acting for an inventor, it is essential to establish the true level of practical experience and track record of any prospective provider of licensing services to ensure their suitability.

In some cases one will find that in return for what appears to be a relatively modest fee an organisation will be prepared to take on both the evaluation, commercial exploitation and marketing of an invention in return for a share of royalties; while at first that might appear attractive to the inventor as being 'cheaper upfront', it may not be appropriate in the long term and may fail to produce the right results for the client.

There can be good reason why it may be preferable to agree a structured fee in return for a clearly identifiable series of professional services. Exercise caution if the suggestion is made that the inventor should part with all or some of the actual ownership of the invention, or that it should be shared with the provider of licensing services '“ that should certainly be resisted unless there is a very good reason and appropriate safeguards can be put into place.

As for the terms of the agreement with the service provider, consideration needs to be given as to such aspects as exclusivity, duration and performance criteria.

The relationship between the client and the licensed practitioner is likely to be a long one and it is essential to be satisfied that the arrangements between them will prove both fair and workable '“ for the route to market will certainly not be without setbacks.