MP: Welcome to the October edition of our In Conversation With… series. Today, I’m with Matthew Ridley, talking about the changing landscape of design laws in the UK and his work with green technology and renewable energy innovators.
MR: Thank you for having me.
MP: You’re very welcome. I’ll start by congratulating you on your recent election as President of the British Group of UNION IP.
MR: Thank you!
MP: What does the role involve?
MR: UNION IP is an independent, pan-European association of private intellectual property lawyers. The European association hosts regular events, roundtables and congresses. I’m the President of the British group, which holds events 3-4 times a year.
We try to secure some interesting and engaging speakers for each event. For example, some of our past speakers have been heads of patent offices and judges, including Benoît Battistelli, former President of the European Patent Office (EPO), and Baron Neuberger of Abbotsbury, previously President of the Supreme Court of the United Kingdom. Both came to speak to us at fascinating times in their careers. Lord Neuberger attended just after he’d retired and talked about the then-recent controversy surrounding the Supreme Court’s rulings against the UK Government over Brexit. We try to make the events interesting, engaging and fun – and also to provide somewhere that speakers can talk candidly.
MP: That sounds fascinating.
MR:It is.
MP: You’re also Chair of the CIPA Designs and Copyright Committee.
MR: I am, yes. For years, the designs field was relatively subdued, but around the time of Brexit things changed quite drastically. I joined the committee initially because I wanted to provide input into the future of designs because so much of the existing law was EU law. Post-Brexit, that has been shaken up a lot. As a result, nowadays there are some really significant changes taking place in design law, with a live consultation underway on the future of UK design law. This could quite radically change the way designs work in the UK.
It is currently very easy to secure a design registration without any substantive assessment. Now, there are plans to introduce some degree of searching, or at least some post-grant searching/examination for designs to tighten up their assessment.
At the moment, too, we have unregistered designs (which function a little like copyright, i.e., that they aren’t registered but come into being at the point of creation). This certainly has benefits for designers and creatives. However, because of the multitude of laws , particularly resulting from Brexit, there are currently several different unregistered rights protecting designs. That’s resulted in a very complicated legal landscape, where even very experienced practitioners can find it challenging to figure out the best way to pursue unregistered design infringement actions.
As a result, the proposals suggest replacing these different forms of designs with a single, unified approach. That is certainly positive, but it does pose some concerns about the levels of protection a more simplified solution might provide. Even though it’s very complicated, the current system provides excellent, overlapping protection. We want to keep that and it’s difficult to see how the new law can retain the same levels of protection under a more simplified system.
MP: It might be a case of being careful what you wish for.
MR: It might. But the system definitely need to be simplified and updated.
MP: Watch this space…
MR: Indeed. It’s certainly keeping me incredibly busy at the moment.
MP: Alongside your work on designs, you’re also a member of the green tech team at Boult.
MR: Yes! The green tech team is a group of attorneys from different subject-matter backgrounds in the firm. We’ve got chemists, software experts, and mechanical engineers, like me. It brings together attorneys who have key clients in the industry and who have experience with green tech and working with those technologies. It’s a great group.
Green technology is a really interesting field at the moment, as you would expect. There’s so much happening in terms of development and funding in the UK and internationally. From a personal point of view, working with companies trying to mitigate climate change is of real interest to me.
One of my favourite green tech clients has created a new type of electrical boiler – one that doesn’t rely on gas for water heat, but instead converts electricity into heat which is stored in a “heat battery”. This allows you to extract the heat into water in your home whenever you need that hot water – allowing you to add heat to the heat battery during the night using lower electricity rates and then to use that heat during the day. This enables you to benefit from different rates at different times of day.
MP: Saving on our energy bills is something we can all get excited about! How long have you worked with the company?
MR: I’ve worked with the company’s founders when it was just the two of them, and helped them to file their first patent application. Since then it has grown a lot bigger.
MP: What are some of the things that innovators in green technology companies need to think about when considering obtaining their own IP?
MR: As an attorney – and this goes for innovators in all fields, not just green tech clients – don’t disclose ideas before you’ve filed a patent application. As soon as you disclose an idea to the public, it can prevent you from obtaining patent protection in many territories entirely. Unfortunately, we do see this quite a bit – clients will come to us wanting to secure patent protection for an invention, only to then realise they’ve released information about the invention or product publicly in marketing material or a press release.
MP: It’s also important to note that even an oral disclosure of an invention may potentially destroy the novelty of a patent claim if it is made in public and is enabling.
MR: Exactly. It’s something inventors must be very careful about. In some cases, discussions with other companies during the development stage of an invention might be unavoidable, but it’s important only to do so once a non-disclosure or confidentiality agreement is in place. It is possible to pursue trade secrets to protection inventions, of course, but there’s also huge risks inherent in that, not only if employees leave, but also if competitors might be able to figure out an invention from the end product.
So my advice for any inventor would be to speak to a patent attorney as soon as possible. That’s what we did with the client I mentioned above. We were there working with them right from the start.
MP: Do you have any other advice for green tech start-ups thinking about their IP?
MR: Specific to green tech, I would say that inventors might not always be aware that they can secure patents for their inventions. Typically, there are two areas people don’t realise they can get obtain patent protection:
It’s worth remembering that any technical solution to a technical problem may be patentable, if it is new and inventive over what has been done before.
MP: As well as being a patent attorney, you’re also heavily involved in designs work, as we mentioned before. Are designs and other aspects of IP important to some of your green tech clients too?
MR: Yes – branding for smaller-scale green tech is really important. Protecting their branding – through trademarks or designs – should be an early consideration for start-ups. It’s also really important that even a start-up’s un-documented rights are recorded somewhere. This is important in case they ever need to rely upon their unregistered rights – such as unregistered designs, copyright or trade secrets – when taking action against an infringer.
To ensure that they can rely upon the unregistered rights, they need to ensure that they have a record of what they have created, when it was created, who created it and when it was first marketed. In particular, when you develop a new product, keep a track of who the inventors are – this is important for patents too, as you’ll need that as part of the patent application process.
Generally, employees/consultants can come and go over a development process (which can stretch across years) so start-ups should make sure they can name inventors and assign ownership properly from them to the start-ups. Having this information on record will save time, expense and effort later on.
MP: There’s quite a lot to think about; is there a structured way that early-stage inventors might be able to approach this?
MR: For any aspiring green tech start-ups, an IP audit is an excellent first step in identifying where valuable IP might lie. The UK Intellectual Property Office (UKIPO) has reintroduced its IP Advance scheme which enables eligible start-ups and SMEs to receive funding for some intellectual property (IP) services. The services for which funding is available include an IP Audit, guidance on developing an IP strategy, and even funding towards implementing the IP strategy (such as professional fees for preparing patent, trademark and registered design applications). We have written more extensively about the scheme and how to access it, but it is certainly worth considering for UK-based early-stage inventors – and something which we are more than happy to assist start-ups with.
In fact, we have a whole 101 guide available for green technology start-ups covering the basics of what to be aware of in terms of intellectual property available on our website.
MP: Are there any other ways patent offices are encouraging the development of green technology?
MR: Yes – there are a number of schemes available internationally to help accelerate the development of green technology, which we’ve written about previously. For the UK, it’s the green channel. It’s available for inventions related to green technology and helps speed up prosecution of a patent application. That’s really useful for start-ups seeking funding, where having a patent could be a very useful way of securing investor interest.
MP: Is it free?
MR: Yes – start-ups just need to explain why their product is green tech. That only involves a few sentences, so its relatively easy.
There are other ways we can assist with green technology – the EPO, for example, offers a scheme for discounts on the patent process for micro-enterprises – which is relevant for many green tech start-ups – and assists inventors in securing protection in Europe.
Funding may also be available through UK development tax credits, which can be useful for some companies. This has become slightly more restricted in recent times – but that means another tax-relief scheme – the Patent Box – has become a lot more popular and is used particularly by many of our larger clients. This scheme enables the owner of a relevant patent to benefit from a 10% effective rate on corporation tax on profits made from patented products – it is complex and we would recommend seeking advice from a tax professional if this is of interest. The scheme is not limited to UK patents, but any patents granted by the EPO, or certain national patent offices in Europe.
MP: All in all, it seems fair to say that getting a patent attorney involved early on is really helpful.
MR: That’s certainly true in my experience. I really enjoy working with start-ups in the green tech industry and elsewhere. At Boult we work as a team to align our technological expertise with our client’s inventions. We’re always happy to speak to people who might be considering filing their first patent application, or seeking design or trademark advice. The earlier we get involved in the development cycle, the better.
MP: Thanks Matt. What are you most looking forward to in the next year?
MR: Seeing some of my most promising clients attaining the funding they deserve would be incredible. We’re even putting one of our clients forward for the Earthshot prize through CIPA. It would be wonderful if one of our clients were considered for such a prestigious award.
MP: It would indeed! Thank you for your time Matt.
If you would like to read more about Matt and his practice, his profile can be found here and you can contact Matt at mridley@boult.com. More information on the work of our green technology and renewables practice can be found here. Until next time, thank you for reading.
Read the full series.
