We catch up with Parminder Lally of Appleyard Lees to hear about the common mistakes start-ups can make with their intellectual property and how a good IP lawyer can help these innovators protect their most valuable assets.
Morning Parminder. Firstly, can you tell us a little bit about Appleyard Lees
“Appleyard Lees is an intellectual property law firm. In particular we specialise in Patent and Trade Mark work.”
Tell us a bit about yourself, both professionally and personally.
“I’m a patent attorney based at Appleyard Lees in the firm’s Cambridge office. I don’t know if you know this, but all patent attorneys in the UK have a science background. Before I became a patent attorney, I was a physicist and then I moved into the legal profession. Outside of work I really enjoy gardening; I’ve got a very small garden but it’s been a lifesaver over the lockdowns we’ve experienced.”
So, like us, you work a lot with start-ups? Can you tell us a bit about the different technologies you see and how you support these companies?
“I’ve been working with start-ups in the Cambridge area and further afield for 10 years now. Because of my background in physics, I work mostly with start-ups that are physics-based. They might be doing work that is building upon physics-based technology. I also work with anyone who’s making mechanical or electronic devices.
“One of my specialisms is working with companies who develop software. These days that includes a lot of AI-based innovation, which is a hot topic at the moment!
“But my colleagues with different technical backgrounds will help start-ups in say, the biotech space or in chemistry and pharmaceuticals. We always match start-ups to patent attorneys with the most relevant technical background and expertise.”
And what sort of services are you providing to them?
“Start-ups usually come to us because they want to protect their technology. So, they think that they’ve come up with this brilliant piece of kit, a great mechanical device or a new bit of software and they want some help understanding how to protect the intellectual property associated with that innovation. We’ll work with them to try to work out whether that’s something that they can protect using patents, or whether there are other types of intellectual property rights that might be more suitable.
“We also advise on other aspects of IP like trademarks for a company name or brand, and internal IP policies. It’s really important that companies keep their innovations secret until they’ve gone through the steps to protect it. In the early days the ‘idea’ is all you have; if you lose that you lose everything.”
In your view, what are the biggest challenges that STEM (Science, Technology, Engineering and Mathematics) start-ups face when it comes to intellectual property?
“Commonly start-ups are cash-strapped and they have to do lots of things on a tight budget. The founders are frequently in the process of seeking funding and might not be taking a proper salary for a while. They have limited resources both in terms of time and money. They’d rather be spending their time innovating, launching their business or seeking investment and will often put off looking at protecting their intellectual property (IP) because they are concerned it will drain their resources.
“While many start-ups will have brought in board members who have experience with IP, others are not really sure what intellectual property is at all. It’s really important they reach out at the early stages to put a plan in place. We have different packages available to start-ups because we know that these are the challenges that they face. We’ve tried to make their lives easier, both from an efficiency point of view, and from a cost point of view.”
What are the common traps that innovators fall into? Is that simply just failing to protect their IP at all? Or are they not taking adequate steps?
“There are a few common traps, I think. One is just not thinking about it early enough. People might not be aware that in order to get a patent for an
invention, your invention has to be new over anything that exists in the world. That means that you must take great steps to keep your invention secret, because if you tell people about it then it’s already in the public domain and you’ll struggle to patent it.
“Start-ups are quite rightly really excited about their idea; they may be looking to create a buzz in the industry or they’re seeking funding and collaboration. But really, they should consult a patent attorney to make a plan first. Sadly, we’ve worked with companies where they came to us too late; a broad version of their product is already out in the world, and they can’t put the genie back in the bottle.
“The other common trap is thinking that all patent attorneys or IP lawyers are the same. It’s great to go by recommendation in some circumstances but if your product is in a niche area, you should really find an IP lawyer who has a background in that area. Your product or idea is business critical so you have to find someone who will truly understand it on all levels, particularly on a technical one.”
People might not be aware that in order to get a patent for an invention, your invention has to be new over anything that exists in the world.
So what’s the worst-case scenario if you fail to take adequate steps to protect your IP?
“What we sometimes see is start-ups not getting round to doing due diligence around their IP at an early stage. They wait until they’re about to launch their product on the market before they think to check the wider IP situation. It then becomes apparent that there are other companies that already have a patent for something very similar to their product. Suddenly you’re unable to launch that product and might have to redesign or start patent license negotiations. If you have patent for your own product, it could form a bargaining chip in such negotiations.
“If you’ve spent three years getting to the place where you can put your product on the market and then you can’t proceed, you’ve potentially wasted three years’ worth of time, money and effort.”
So it is not as unique as they thought it was or they’re just a bit late to the party?
“Sometimes it’s just they didn’t do any of these checks at the beginning to see whether their idea was unique; we can help with that side of things. Maybe you could have made some tweaks to your product, for example. In our experience, as much as you think that your idea is completely unique, there’s bound to be someone at the same time on the other side of the world doing the exact same thing. Who has the patent for the invention, and who can therefore potentially stop others from making and selling the invention, often becomes a weird race.”
What about protecting your rights? Once you have put your patents in in place, is litigation common?
“In the high-tech area, we don’t often see big companies suing small companies or small companies suing other small companies. More often than not the start-ups in this space are looking to collaborate with, or be acquired by, some of those big companies. But of course, having a strong IP strategy can strengthen your negotiating power and increase your value.
“On the flip side, in the pharmaceutical and biotech space, there can be more infringement issues. The value of pharmaceutical products is much larger and the stakes are really high.”
So what’s your key advice in terms of start-ups protecting their IP? What are the first steps that they should be taking?
“Start thinking about it early. It might not be first on your agenda but if you’re seeking investment, investors will expect you to have at least thought about your IP position.
“My advice? Tell us what your business is doing and we’ll talk you through your options and what we think you might need. You don’t have to necessarily spend lots of money at that stage. Quite often we can put together a simple IP strategy for you, and that can be enough to satisfy investors that you’ve thought about IP and have a roadmap to protecting your innovation.”
Is it quite tricky to file a patent when actually your design isn’t finalised?
“It depends on the circumstances really. With software, for example, we know we don’t need to see the end code, it’s more just about what the code is doing. It can be more difficult with hardware and mechanical devices because people have a sketch and an idea of what they’re going to make. But then when they start to build it the ideas and designs evolve. It’s a case of taking advice about when the right time to proceed is.”