Narrator (00:00:05) - Welcome back to Bringing New Ideas to Life, the podcast from a Accentia. Today we're continuing our series with Dom Isley and Bruno Reynolds, where we are discussing IP strategy. In this episode, DOMA Bruno will be exploring how to navigate your competitor's ip, which exists in your market, monitoring their patents and challenging when necessary. We hope you enjoy

Bruno (00:00:28) - Competitor awareness and competitor tracking. Um, is, you know, I mean, it's a standard business practice when, when looking at products and services, but is, do you think that's important with regards to IEP as well?

Dom (00:00:42) - Well, well, very much so. Um, so many companies, particularly as they progress through seed or series A or yeah. Different paths will be asked, you know, what, what's your approach to freedom to operate?

Bruno (00:00:58) - Yeah.

Dom (00:00:59) - Um, and freedom to operate is how do you navigate other people's ip? So there's, you know, we've been talking a lot about generating your own ip Yeah. But you've also gotta navigate other people's IP and in particular, uh, patterns. Um, so there are sort of two approaches, one of which is to, um, get a really expensive patent infringement, opinion, search and opinion. But my, my feeling is that they do have their place, but only under very certain specific circumstances. And those particularly revolve around when the product is close to finalization or the service. And also, you know, as soon as they're done, they're almost obsolete because some other pattern could be been published, which

Bruno (00:01:48) - Is true. They're only valid on the day.

Dom (00:01:50) - Yeah, exactly. Right. So actually I think a, a better approach, in my view, especially for early stage companies, is to, is be a lot more dynamic about it because their products and services will be changing as, as they iterate, as they develop the technology. And so it's, in my view, better to watch your competitors, uh, and search for patents on a sort of monthly or regular basis, a fairly light touch approach that also gives you the ability to intervene in those patents should you think they've become a, should you think they're gonna be a problem. Yeah,

Bruno (00:02:23) - Sure. I mean, when, when I, when I speak to it with, uh, with entrepreneurs is one thing I mentioned is like there's now quite a, there's now several fairly good free tools for, for patent analytics. Yeah, yeah. And you can set up searches on your particular domain technology area. Yep. And, and they'll just key

Dom (00:02:40) - Words and Exactly. Names. Yeah.

Bruno (00:02:42) - So you don't, you don't even need to act, you know, actively search for things. Mm. They'll just come into your inbox, as in when they've been published. Yeah. Um, so, so that, that helps with competitor tracking quite a lot. Mm-hmm. . Mm-hmm. . I also tell 'em, you know, when you're, when you are, when you're at the very early stages of innovation, you're thinking about investing in a product line, you can do a light touch, freedom to operate search yourself. Yeah. Which can be sufficient to identify any obvious barriers, but there will be times that when, you know, investing in a, a more thorough, detailed freedom to operate search is worthwhile. And, you know, examples of that I think is like when you're, when you're perhaps a larger business and you're looking to acquire another business when you are about to launch product line, these sorts of things would be worth investing in, you know, given, given the cost that you're going to, you know, spend on, on either acquiring or launching a new product.

Dom (00:03:37) - Yeah. I, I would say almost the, the two are not exclusive, but when you are developing a, a product or a service, you should be looking to see what potential barriers they're out there and how you might navigate them. Not with necessarily a full freedom to operate, but just looking in the technology space to see what patterns are out there. Yeah. Some of those patterns, you know, may not be enforced and they, you know, there will be some useful information in there anyway, um, so it might help you, but I think, you know, it is as important to just keep a, keep a track on patents that might block you in the future.

Bruno (00:04:11) - Yeah, yeah, for sure. You, you mentioned something else as well, just, just now about, um, one, one of the, one of the uses of tracking your competitors is that it gives you the opportunity to challenge patterns. Can you, can you say a few words about how you might challenge a competitor's patterns? Yeah,

Dom (00:04:30) - I think it's important just on, just to reiterate that you're looking at published patents.

Bruno (00:04:36) - Yeah. So

Dom (00:04:37) - A patent is filed 18 months later. It's, it's published with an a publication. Yeah. And then at some point later it'll, it'll be published with a b and that's a granted national patent. Yeah. So the first time you get to know about someone's pattern, there's always a bit of a lag. There's that 18 month lag. Yeah. Um, but you find an, a publication and you go, okay, well this looks interesting, but it's probably gonna be quite Yeah. Broad. Typically patterns are file quite broad. And then later on they're examined and, and narrowed. So you have a look at that pattern and you go, okay, that seems quite narrow, but from my knowledge of the what's in the public domain already, I, I think they're unlikely to get something quite so broad. So we'll just track it and we'll put it on our list and we'll see if it goes into other countries or, um, if it's examined, and then we'll maybe see that the, the claims, the scope of the claims is kind of restricted over time and we don't have to worry about it.

Dom (00:05:31) - But if, if it is going in a direction that we are concerned about, then we've sort of got two options. Um, the first one is we can do something called third party observations, which is when we basically submit some, uh, public domain information, prior art to the patent office. Yeah. I say, we don't think this application that you're examining is any good, it's not novel or whatever because of this, it's been done before. Here's an example that can be done mostly anonymously, which is, so you're not raising your head above the para pit, but the downside is that you're not involved in that conversation. It's just, here you go. And then the conversation continues between the patent office and the patentee.

Bruno (00:06:11) - Yeah.

Dom (00:06:12) - The other option, and they're not exclusive, is the other option is you wait for the patent to grant, and then most jurisdictions have a post-grant opposition period.

Bruno (00:06:22) - Yeah.

Dom (00:06:22) - Um, where you can, any, any person, uh, can oppose the patent on or patentability grounds. And that's got advantages because you then are part of the Yeah. The conversation.

Bruno (00:06:36) - Am I right in thinking you can't do that anonymously if, if you wait until the post grant you, it has to be declared who's

Dom (00:06:43) - In, in Europe, you can do it so that European patent office, you can, you can do it through what's called a straw man, which is basically just a front through a, through a, a patent attorney. Oh, right. Doesn't, you don't have to name, I think in the US you do, but I, I'd have to check that. Right. So I think in the US you do have to name who you are, but I'd have to check

Bruno (00:07:01) - That. So, so quite a good, um, um, um, method or, or, or, or IP strategy to ensure freedom to operate is prevent your competitors pulling up those barriers in the first place by keeping an eye on what they're filing, keeping an

Dom (00:07:19) - Eye on what they're filing. Yeah. For a start. If, if it's relevant, then it's also gonna, in that, those patent publications will inform your own patenting strategy because a patent that's relevant for freedom to operate can also be close in terms of novelty for your own later patents. So it's good to know about them anyway. Um, so keep a, keep a track of people's patents intervene if you have to. And the two options we just discussed, um, and, you know, you might, it's good, it's good to know early on if you, if you might have to consider a workaround

Bruno (00:07:54) - As well. Yeah. Yeah.

Narrator (00:07:56) - We hope you enjoyed part two of our IP strategy series. And we'll be back for the final part in episode three where DOMA Bruno will be looking at where the real value lies on IP strategy, how you can record, protect this value, and what happens to the IP when you exit a business. And as ever, if you'd like to submit any questions or, uh, have any feedback on the podcast, then please do contact us at Ideas pod@ocaccentia.com. That's ideas pod centia.com. Thanks very much. Bye for now.