Is It Always Right To Simply Protect Your Intellectual Property?

May 14, 2015

IP lawyers take it as read that if you can, then you will always register your intellectual property rights – be they patents, designs or trade marks. The logic goes like this…

Take something novel and stop everyone else from using it, apart from you, and make lots of money!

However, this type of absolute protectionism isn’t always a good business model. And here’s the commercial angle. In 1936 Kodak® started to produce 35mm film and having protected it, they started to make a considerable sum in selling chemicals to process and develop film. However, in 1975 Kodak’s® engineer Steve Sasson invented the digital camera. (Yes – 1975 the first digital camera!). “Yikes” went the management, “that’s a great idea but it will adversely affect our business. Let’s suppress it now”. They did however, patent the technology. In fact Kodak® went onto file around 1000 patents on digital imaging.

In suppressing the technology, Kodak® then started to watch their business unravel. You see as Zig Ziglar said, “people don’t buy drills they buy holes”. In suppressing the technology, they made a short term gain but a much longer term loss, and in 1999, after the first digital camera patents were expiring, their competitors leapt ahead of Kodak®, smashing Kodak’s® share price and forcing Kodak® to drastically cut jobs and costs just to survive. Customers buy photos, not chemicals and film. Had Kodak® licensed out their technology well before they did, they would have shared the technology, been market leaders and maintained their share price. You see digital images were what we now call disruptive technology. (See my blog on this topic.)

The problem is that some companies are TOO protective of their ideas. Many years ago Tetra Pak® made a similar mistake by forcing customers to buy both machines AND packaging directly from them rather than licensing the technology out. After a short space of time the European Court stopped this anti competitive practice which tied buying one product to another. Tetra Pak® then made up the difference in sales by licensing their technology out and building a World Wide network of licensees. Ironically this latter strategy gave them instant market presence in a number of places that they’d never done business in before.

A major issue is that companies get SO tied up in protecting what they make, that they forget about their customers and why their customers buy products. Whilst intellectual property exists to create a barrier to being copied, the most intelligent use of IP comes when it is licensed out and monetized to make an income stream. Syndicate and recycle are two useful mantras.

So the question to ask yourself is this. How can I use my IP to create an income stream and what do I need to do to get it out there and shared in an intelligent way? We’d be happy to help you make that judgement call!

A Big Well Done!


Congratulations to all our hard working colleagues at Virtuoso Legal. We’ve been short listed in the Lawyer Awards 2015 for “Boutique Law Firm.” The results will be revealed on 23 June. In the meantime, keep your fingers crossed for us!


Virtuoso Legal are specialist Intellectual Property Advisors.  Because our expertise and commercial acumen are second to none we are an Award-Winning Team.  Our reputation as one of the UK’s leading Intellectual Property Practices is built upon delivering the highest quality work for our clients.  If you need any help or advice on any Intellectual Property matters then give us a call on 0113 4032102 and we provide a free consultation.


Dr Nikola Tesla and the Death Ray Machine…

March 3, 2015

Tesla is widely credited with inventing AC or alternating current, and of course wiping the floor with Thomas Edison’s direct current or DC as a general power source.

In fact he didn’t invent AC – it had been around for a few years before Tesla got his hands on it. However, Tesla’s genius led to the creation of the induction motor and transformer which amplified the availability of power and voltage in particular. George Westinghouse licensed Tesla’s patents and the rest as they say is history. Westinghouse is still a World class utility provider.

Tesla was a prolific inventor. He is credited with over 112 patents, filed in 25 different countries. Some of his other inventions include the largest ever magnifying transmitter coil which produced lightening bolts over 100m long! Can you imagine that on Top Gear or in physics lessons?

He was also credited with producing Tesla turbines which used discs rather than blades to propel liquids, wireless lighting, extra terrestrial radio transmitters and an “ideal flying machine.” The ideal flying machine and the work on the death ray machine are still classified documents in the US. Some say the US Government didn’t really take any notice of Tesla until he attempted to publicise his work on these devices. Whatever the truth of the matter, we can’t read his work on these inventions.

He was also way ahead of his time in other ways. Especially with his Tesla Shield – an electromagnetic shell that repelled radio waves or electromagnetic forces and kept material within the shield totally protected. The Tesla Shields still have military and civilian applications. His talents didn’t stop there. He patented a solar powered “sun motor” and an amplifier of mechanical power, i.e. a mechanical rather than an electrical invention. He was surely one of the most awesome inventors ever.

Which makes me wonder if we do enough in the UK to really help our inventors?

In the IP World I’m a big supporter of tax breaks for technology companies. We invent things, and it is only right that we support companies who manufacture and do R&D here.

It is with some sadness then that I found out that applications to the Patent Box Scheme must end for new applications before the end of 2016. The scheme itself runs until 2021. There is some suggestion that a new scheme will be introduced for patents after 2016, but the odds are that it will be less generous than the existing scheme. So the message is simple; get your inventions in now, and apply for this tax relief in good time!

If we want the next Westinghouse or Tesla in the UK, we need to support them in whatever way we can!

If you would like any advice on inventions or tax relief, give one of our team a call for a no obligation chat on 0113 4032102 or email us!

When is a muffin, not a muffin?

October 10, 2013



When it is trade marked as a Duffin ®.

Hats off to business woman Bea Vo, owner and proprietor of Bea’s of Bloomsbury who had the imagination to cross a doughnut and a muffin to create a duffin. The idea wasn’t entirely her creation. Apparently the domestic Goddess Nigella Lawson did a recipe for jam doughnut muffin combos a few years ago. However, Bea with her creative flair made the duffin hers by the addition of raspberry jam, nutmeg and buttermilk. This juicy moist delicacy was one of many luxury creations sold in her popular and upmarket bakery in London. That was all well and good until Starbucks cake supplier Rich Products Limited came along and registered the name Duffin ® in class 30 (a food products category) for guess what? Yes you’ve guessed it – a product that is remarkably similar to Bea’s duffin cakes. In fact Rich Products have filed for a Community Trade Mark for a whole range of pastries and goodies. However, having already been granted a UK trade mark in class 30 for the Duffin®, Rich Products wrote to Bea and asked her to stop using THEIR name!

As you can imagine, Rich Products say that they DID undertake clearance search exercises and didn’t find any problems with the brand. Bea says they can’t have looked very far as her very popular duffins are available on line and a Google search should have brought them up. However, she had not registered the unique product as a trade mark. The short point is this. Registering a trade mark IS the surest way of protecting key brands. In certain businesses such as consumer goods, food and clothing, getting your brands registered is fundamental, and it is VITAL to do full clearance searches. This entails a lot more than doing identical word searches, and trawling the internet. Whilst it is clear that Bea has prior rights and that Rich Products can’t stop her, they can stop her from applying the duffin name to other bakery products.

A professional clearance search will look at not just the same words, it will also “landscape” around the mark to find potential phonetic conflicts and marks which are similar but not identical. This exercise allows you to limit the risks you face when filing or launching a product or service.

So what is the downside of filing a mark without a clearance search or against the advice of a clearance search? Well problems often arise from other trade mark owners who will object to your registration. It could result in costly and protracted trade mark opposition results, or in certain cases meaning that you get sued for trade mark infringement. In virtually all cases you will lose your filing fee. If this is a Community Trade Mark, then you will be down over £800 and unless you really want the mark, it often isn’t worth the risk.

Need a trade mark filing? Come and discuss it with Liz, Kim, Dan, Kate or Kirsten at the Sunshine Bakery. The tea and cupcakes are on us! Call 0844 800 8871 or email us