London Design Festival 2017: Design protection – hindsight giving insight
Martin Darbyshire, tangerine CEO, was invited to talk at the London Design Festival 2017 alongside; Rob Law Founder of Trunki, Milan Patel an intellectual property lawyer, Ellie Runcie Director of Growth and Innovation at Future programmes of the Design Council and John Coldham an intellectual property expert at Gowling WLG.
The podcast looks at the importance of the protection of intellectual property and offers practical advice to designers from lessons learned.
John Coldham: Welcome to this our fifth annual event as part of the London Design Festival.
We are not here to pretend that design protection in the UK is straightforward or that the system always works but there are things that you can do to reduce the risk of being copied and we’re here to let you know what you can do and what you can’t. There’s no one right answer for everyone, different companies and individuals have different budgets that they can spend on IP protection, but the important thing is that you know what options are out there so that you can assess what might work for you. What might work for you today could be very different to what might work for you in a few years’ time.
On this podcast I am honestly joined by a panel of true experts in their fields including Martin Darbyshire who needs very little introduction, but he founded the legendary tangerine Design Agency in 1989. Martin is perhaps best known for developing the world’s first lie flat bed in business class for British Airways, a design that contributes more to BA’s bottom line to this day than any other. Martin’s profile is truly international, taking on tasks such as being a juror for the renowned Red Dot Awards, joining the UK TI on trips to Asia to promote design and being a visiting professor of Central St Martin’s College of Arts and Design.
Ellie Runcie is Director of Growth and Innovation and of future programmes of the Design Council, prior to that Ellie was a Project Co-ordinator at the British Museum. Over the years Ellie has come across very many young designers whether as part of the hugely successful Spark programme or through other ventures that the Design Council has run.
After starting out working with Martin, Rob Law founded Trunki in May 2006 and since then it has sold over 3,000,000 suitcases in 100 countries, with consumers spending over $200,000,000 on his brand. Trunki’s head office is called The Mothership where 30 people are based and there are over 40 more based at Trunki’s manufacturing and distribution facility in Plymouth. A British success story Rob has had his fair share of knockbacks from the dragons at Dragons Den to the Supreme Court in his high profile design case, but the nations press came out in support of Rob except according to Rob the Basildon Echo. Rob’s latest big innovation is a Trunki for bigger people, the Jurni which he is selling slightly differently to the traditional channels that he sells the Trunki through.
Milan Patel is an intellectual property lawyer who used to work at a law firm but now has responsibility for all legal issues at Ceravision including the licensing and protection of its extensive IP portfolio. Ceravision has developed a high efficiency plasma technology that is a unique and new way to produce energy efficient lighting. Particularly useful in specialist applications such as horticulture, it can tailor the spectrum output, as well as delivering high levels of illumination from a very small source. Milan has been involved in large IP litigation over the years but his focus is on ensuring that his company has the right level of protection neither too much nor too little.
Perhaps we could start by each of you explaining in brief terms what involvement you’ve had with intellectual property protection over the years. Maybe Rob would you like to start?
Rob Law: Sure. Being a trained product designer I understand a reasonable amount about intellectual property from trademarks, patents and design registrations and when I first started showing the Trunki concept around I thought it was pretty important to try and secure some IP and the idea of a ride-on suitcase can’t really be patented, so the next best thing was a design registration. Since then we’ve gone on to register, I think we’ve got a portfolio of something like 65 design registrations, eight patents and eight trademarks.
Martin Darbyshire: Gosh I’ve had a wide-ranging experience in terms of intellectual property. I’ve had the privilege, somewhat scary, of being an expert witness on a major trial, both in terms of design rights and patent infringement. I work with a lot of clients from different market sectors who have very different ranges of experience in terms of using IP, be it design registration or be it patent. So we get to connect with people who are making key decisions around how they act and what we do and we always pass them onto an expert who is going to give them sound advice around what they should do.
Actually we are also dealing with a lot of start-ups who in a way may be clearer about what they are achieving with IP and are more struggling around how they get money and how they build a business case. But it is still astonishing to the number of people we connect with who don’t understand about design rights and what they can get from design rights and how much protection that gives, what is actually a very a small amount of money and that I think it is particularly important for designers or for those who are start-ups and are looking to make an investment. So it’s a very broad range of experience. The tricky one as a designer is we’re often also asked by our clients to indemnify them against any losses that they may encounter through ideas that we create, which I work very hard to stay as far away from as I possibly can.
John: Now we all know that thanks to this podcast.
Milan Patel: Yes my involvement at Ceravision with regards to our intellectual property started out initially actually to oversee a massive piece of IP litigation which is both in the US and the UK and lasted quite a bit of time but through that it really brought home to myself and all of my colleagues in the R&D department the importance of ensuring that we protect our other new IP that was being developed by the company at that time and through that we’ve come up with quite a large and extensive patent portfolio, which is the prime IP asset the company has. But we’ve also filed trademarks and design right applications where necessary. It’s been a core asset for the company which is recognised by the investors as something that they are part of and that attracts value for them. We undertook an IP valuation exercise on the back of the portfolio we had and that’s proved to be very useful for us as a company as we grow to help generate and to raise finance it’s been very important.
John: Thanks very much. Ellie, a slightly different perspective from the Design Council?
Ellie Runcie: Yeah a different perspective. My involvement with the intellectual property has really been through shaping programmes supporting businesses over the last 15 years. So we supported over 5,000 small and medium sized enterprises through a programme called Design and Demand which ran for over ten years. It was really working in partnership with organisations like the Intellectual Property Office and other government related organisations that I started to make the connection that the strategic design advice that you give to businesses when they are really trying to think through changes in their offering to market, you know IP advice needs to come in at the really early stages of that.
So we were working with start-ups in that programme, we had hundreds of ideas from entrepreneurs and with quite scientific ideas through to very general ideas that you could imagine coming to market quite quickly and it was really, I thought it was a bit of a gap that no one was really advising those early stage entrepreneurs at that proof of concept stage on IP and they were seeing it as something to be afraid of rather than something that could be a trigger for innovation. So today there’s a programme that we’re running called Spark where we’re really trying to bring all of these different necessary ingredients together for early stage entrepreneurs.
John: Do you want to tell us a little bit about Spark?
Ellie: Yeah so Spark is one of a few leading product accelerators in the UK. When I say one of the few I mean physical product, there are lots of accelerators out there in the digital sense. In fact I think the last report I looked at, there were about 170 in the UK alone and many hundreds globally and it’s an area that’s really really taken off globally in the last decade. But in the UK still there is really a need for entrepreneurs with a physical product idea to get help to get through that very early stage proof of concept phase. So Spark was set up directly to support and fill that gap. It’s a 16-week support programme for entrepreneurs who think they have an idea they might have…the idea might be a sketch stage or it might a physical prototype that is currently being tested or about to be tested or they might be beyond that stage and what we do is we put them through their paces with different experts coming in a different times through the 16 weeks. It’s led through design expertise but we bring in IP, we bring access to finance, we bring in strategic marketing and how to write business plans.
So all of that is woven together in a really good tight package over the timeframe. They get £15,000 to help them develop their idea. So again that’s quite a unique thing as well as the advice, the funding element is something that I think every entrepreneur needs to help them through that tricky first proof of concept phase and at the end of the 16 weeks those that have actually gone through the programme with the funding have the opportunity to pitch for a share of up to £200,000 more funding. At that stage what they’ve really got to be able to do is influence an investment panel that their idea is just about ready to take off or they know what they need to do in order to make it really take off. So that funding is really to help them to get to market.
The thing that’s really different about Spark is that the programme although we fund the ventures, we actually run a fund alongside it so the ventures and entrepreneurs that end up getting up to market make us a very small percentage, returned to the fund, which gets reinvested to support future entrepreneurs who want to take their idea to market. So it’s a sustainable fund. It’s quite different from anything out there really but, you might look at equity or other similar models to have more ownership in the business, we don’t look for that at all.
John: Thank you. Rob and Milan probably a question for you, as you actually work in businesses that create and then own the IP, as opposed to Martin who also advises those businesses. When you’re looking at an IP protection, what decisions are central to your approach in terms of what to get or how to go about the issue of getting IP protection? Milan do you want to go first?
Milan: Yeah from our perspective we sort of start at a point, over recent years it has been ensuring protection of the new idea that the scientists might have come up, primarily because that’s the core asset that the company is working to develop, and to use and exploit and market to third parties in potential commercial discussions. We know over the years that in many ways some of our published patents have been some of our best marketing tools because the competitors, in our sector the likes of Philips, GE, Osram you know they would be checking the published patents as they come through, reviewing portfolios of third parties to see where they may be gaps or not. We’ve had a number of discussions that have arisen a trade shows etc. as a result of conversations starting about IP and patents that have been filed. Then beyond that there’s always the issue of cost and ensuring that whatever you’re doing is relevant to the business strategy in a sort of cost effective manner.
John: Rob the other half of my question was actually how’s your operation changed over over time? Do you want to tell me as you’ve gone to start up to a big successful business. Tell me how you approach IP protection sort of now and what lessons you’ve learnt over the years?
Rob: Well I guess we’ve always strived to obtain patents on our product ranges and to differentiate the range from the halo brand of Trunki by giving them their own trademarkable names and just really trying to roll up a lot of IP protection around all our products. I mean as a brand we’re only as valuable as our IP, primarily around trademark, but all our product lines have been quite innovative and unique so we’ve managed to obtain patent protection for pretty much all of them.
I think the government’s launched some interesting schemes over the years that have really made us kind of embrace things like patents, such as the patent box and the R&D tax credits which has made us…when you’ve developed a patented product or when you’ve applied for a patent for them it makes it a lot easier to claim back on your R&D. But I’m not sure a huge amount has changed as we’ve grown bigger we’ve had a bit more available cash to invest in the IP and it can be incredibly expensive and just managing the portfolio of eight patents, I know Milan must have a fair few more than that, it’s hugely expensive for us, but we’re building an asset there, that’s probably the most valuable asset in the business or on the trademark.
John: When you say hugely expensive is that partly because presumably you are looking at things on quite a global level?
Rob: Yeah without even thinking we go for UK, China and America and then depending on the products we’ll extend that whether it be out in Europe or South East Asia.
John: You have quite a diverse product, I mean all within the sort of children travel category, but you have quite a diverse range of products now from I think we’ve got some sandwich boxes through to obviously the suitcases and beyond. Do you protect designs and patents the way you can in everything or just in the most important products or…
Rob: We’ll file a registered design for just about everything and there’s one or two products we have sourced from the open market so we cannot protect those. But yeah we will file a registered community design for all our products. The learning there is that some of the successes that we’ve actually had on the back of protecting our design over in other countries outside of the UK and that’s been really valuable to have a document that states this product that looks like this has kind of an official start date if you like. So when you’re filing for Chinese copyright you’ve got a legal document that the powers that be over there recognise rather than not having anything that isn’t an approved document.
John: I have heard it said that the new UK design, registered design fees being, I think it works out at £2 per design if you file 100 on the same day. So for £250 or whatever it is you get about 100 designs provided you apply online or something. Have you any thoughts on whether that is actually quite a good system for using it purely and simply as a record of when you design something and whether it is a system you could use as just evidence of your design for example for things like in China?
Rob: This was with trading across Europe, trading globally we haven’t really considered the UK system since the European one came out ten years ago…no however long it was ago…
Two voices: 2003
Rob: So we’ll only do European designs…but obviously the UK system is a very low cost solution, how that is in terms of governments and intellectual property officers I’m not sure.
John: Martin and Ellie one for you. You’ve both worked with numerous business and designers, what would you say was the most common mistakes that you’d seen? Martin? Ellie has nominated you to go first [laughter].
Martin: Well I guess I’ve got to own up that we probably made the classic mistake when we set out in 1989 because we weren’t actually called tangerine then. We received a letter through the door from a design consultancy in Holland who had the same name as we originally chose and they said you are going to have to change. So in a way it turned out to be a success story because we did change and became tangerine and then registered tangerine as a trademark and because of that have been able to defend our brand which we’ve done on at least one occasion and I think that’s a very important issue. So if you’re a start-up trademarking the brand name in the areas that you’re likely to trade into is really fundamental.
I think the common one we see from a lot of start-ups is not utilising design registration because as you’d mentioned already John it is very low cost, it does give you quite strong powers and I think also I stress and I hope I’m correct in this that you know it’s quite strong in China if you are trying to trade in the China market, it’s a much more easy way of defending what you’re doing than perhaps using other forms of IP. So we frequently…
John: …shall we hear from Rob on that, Rob you’ve have experience in trying to enforce in China what do you think?
Rob: Well…so the frontline of copying now is online with the global marketplaces so you’re more likely to have Alibaba but in China they’ve got two key sites called Taobao and Tmall and actually a third one called 1688 and Taobao a bit like…you can liken it almost to EBay in China but that’s where the factories sell direct to the public and that really is the real frontline. So being able to police your IP on those platforms is critical. Initially I started doing that, that almost turned into a full time job. I delegated it to a few people throughout the business and eventually it just became a too big a project and we now outsource it. But since outsourcing and we get nice reports now, over the last three years we’ve taken down 4,500 listings off of those global platforms.
John: So it does work?
Rob: Yeah well it works when you can outsource it to an expert because it is whack-a-mole, you take it down the next day, it pops back up, you take it down it pops back up. So and also having things that are easy for people to understand. So we actually haven’t gone through the process with patents yet, we haven’t needed to. But in China obviously they’ve got the people behind the scenes who say yes that’s a trademark infringement or yes that’s a registered design infringement because it is pretty obvious. So when you start getting into patents then it takes a lot longer.
John: Martin sorry I interrupted you.
Martin: No it’s fine. Remind me of the question?
Several voices at once
John: …the questions was the most common mistakes that you’ve seen, Ellie perhaps you would like to?
Ellie: I mean…I was reflecting on this I think that on Spark, you know if we look back at all the applicants over the last three years or so it does seem like the majority, three quarters of all applicants or more than haven’t thought about IP but all of them are stating that they’ve got an idea that they think could be really commercially successful. Those that we actually bring onto the first stages of the programme we call it Design Camp, a quarter of them by that stage do have a design registration, some have even actually filed for patents or have started to explore the process of a patent. So you know I think that’s just an indicator for me that we’re looking for that as a, we’re not an investor but you know to back the ideas that are sure to have more potential in the market. We’re looking for people who have already started that process, or at least they’re thinking about it. But it’s never too early to think about it and I’m always surprised at how many people really aren’t even at those early stages…
The second thing is perhaps, and I understand why there’s a potential to be overprotective about their ideas. So we have had entrepreneurs come on the programme who literally will not talk to even us about the idea and we’re there to try and help them. So it’s that thing about absolutely being careful about not showing your crown jewels with everyone but the thing is that we really need entrepreneurs to get out there and talk to people about their idea because especially now with the world being so digital you could create a community around your idea in no time which could help you then kick-start an amazing crowdfunding campaign or another kind of fundraising campaign. So I think…so I think on knowing how much to talk about your idea, knowing how not to be overly protective of that I think is another mistake.
The third thing is that a lot of entrepreneurs tend to you know because they’ve got one idea, one physical product idea and they don’t necessarily realise the potential value that could have in the market or that it could be range of, it could be a solution to a range of problems out there, across a number of markets. So you know it’s sometimes really important to bring people away from that short term, one product focus to think, long-term, future proofing. If it grows into a business it isn’t just one product, it could be a portfolio, think about your brand at the same time, there are all sorts of other commercial factors to bring in at that early stage. So yeah those are the three things really. You know think about it early, take the long-term view and don’t be afraid to talk about your idea.
Milan: I think it’s probably worth adding there that when people are nervous about talking about their ideas as long as they’ve entered into some form of confidentiality arrangement, then they should feel more free to talk about their ideas with the relevant people. As long as they do that with only a select few, because obviously confidentiality agreements are all well and good, but if you told the world then somebody is probably going to breach it.
Ellie: And just to be more specific then I think…you know we’re helping entrepreneurs think about who are the people they need to go out and talk to about their idea because some of them will be potential users of the product and by talking to users you could get really invaluable insights about even greater value that you could bake into your idea that you could have greater potential to protect. So I think there’s talk, just understanding the different people and mapping that out. So yeah by the time you are talking to potential customers or people who are going to manufacture your product or you are going to license it to, you know obviously those a different conversations to have, so it is understanding that and being given that advice I think.
Milan: Another point just on that is I think you hinted at it is that you don’t have to tell everybody everything.
Milan: So you can tell somebody what your idea is and if it’s a design you don’t necessarily need to show it to them you just tell them what the idea is and that’s not going to ruin any design protection anyway.
Ellie: We would always say that the best design story is usually a benefits driven story as well because it is usually a problem that you’re solving for someone out there. So even if you are trying to engage potential customers and users of your product then it should be a benefits driven thing anyway to make people want to sit up and go…So how does that work then? Then you’re away you know…
John: …Rob I think you were going to say something on that?
Rob: Yeah I think patents are very…they put a lot of people off and when you talk about IP patents their the first thing most people think of, not fully understanding them. You kind of get your classic shed inventor who won’t tell anyone, but the design process is all about prototyping, getting feedback and improving prototype and getting feedback and developing an idea and you can never develop an idea if you won’t tell anyone about it. So you’re only ever going to stay in your shed and it will never see the light of day, so people have to be a lot more open and as you say you can get forms of protection around disclosure.
But I believe it’s more important unless you’re getting into the technical stuff, it’s more important to get that valuable feedback initially than to try and not talk or develop anything. I had a classic once, an inventor contacted us who’d invented a suitcase that turns into a deckchair and he wouldn’t talk to anyone until he had patented it. Who’s going to buy a suitcase that turns into a deckchair, what would you with all the sand that goes in there [laughter] it goes in your clothes and everything…so yeah I think it’s really important to get out there and talk to them…the target market.
John: I think there’s an important distinction there between patents and designs actually. The patent is like let’s take your deckchair chap because I don’t know the product so I’m not going to be breaching any confidences…The invention there is not really the idea of a suitcase that turns into a deckchair, it’s going to be how it does it, it’s going to be how the hinges work, how the thing folds up and unpacks. You can talk to people in this sort of level of detail without ruining any patent for the actual way it works and I expect you can talk about a lot of your products, that you’ve got patents for even before you got a patent for it and selling, because it could be about how the clasp works in a particularly good effective way, you don’t need to show people that in advance.
The design as I was saying before can be registered very very cheaply especially in the UK. So you could just get that design in the UK so that you feel more free to talk about it, you can then use that as a springboard to get your European, your Chinese and your US designs. You’ve got a limited period of time to expand it out into other countries, but that gives you that reassurance that for a very low amount of money you can…and you can do it yourself online, there be dragons there, but it’s worth looking at, it’s better than nothing.
If you’ve done that you will feel slightly more reassured that you can talk more freely because I agree it is definitely worth getting that discussion going with potential investors, potential users, because as Rob says it’s not worth having a product that nobody’s going to buy, especially if you start investing in patents.
Milan: One further point to perhaps make is that with patenting side you can file in the UK a provisional patent application which gives you 12 months of protection during which time you can develop your idea further before turning it into a non-provisional filing which is then published lending you time. So that could give people some more confidence to speak about their idea more openly knowing they’ve got the stamp with a date saying that they’ve got protection from that point forward if that can help.
Martin: We’ve used that recently, we’ve patented something ourselves which…
John: …a first for you guys…
Martin: …yeah a first but we wanted to, there’s an opportunity to talk to potential customers around some very large scale customers and whilst people think of patent filing as expensive actually in terms of the marketing tool, in that case you know versus an exhibition stand or you know reach a very visible situation, it was a good value route, on the one hand giving us some form of protection but actually you know the idea that we’re really looking to develop lies behind that one it’s not central to the first, there are other elements that you need to bundle in together which help them create something which we think is more commercially value. So we used it as a route of (a) giving us protection and then (b) also enabling us to talk more openly to who customers may be. Because this is not something that we can take to market ourselves, this is something that we would look to licence you know it’s just far too big a challenge for us to want to deliver.
But I think that that’s an important aspect for designers to give consideration to but then again you need good advice around it you know. Because we often trawl Espacenet or look at Google Patents just to get some basic understanding of what’s out there but it’s only once you’ve got some real advice that you can understand actually there may be an existing patent which is lapsing or someone hasn’t looked to protect it and your idea you know is no longer secured by that existing IP, so you really do need to get you know good professional assistance in what you’re doing there is such a complex sector…
Rob: …and the British Library IP Centre is a very good first step as well with their free advice.
John: Now we’ve talked about some of them already but if anybody’s got any more success stories they’ve seen, either within your own organisations or elsewhere of things where IP has helped. Either help bring in investments or bringing…or stopping copycats or you know whatever, I don’t really mind but if we can just discuss a couple of ways in which IP has helped businesses. So looking at it from the other way round, not why should they get but what has it actually achieved that would be interesting to know.
Rob: I gave a couple of examples, first off when the Trunki was trademarked in 2003 and although we’ve had lots of copy products, primarily from South East Asia, virtually no one’s copied the trademark because we’ve got a very established trademark on the global systems.
Secondly I guess five years ago we got some private equity investment into the business and when we were pitching the business they were all really surprised at the level of IP protection we had and the amount of IP we had. So we were really investing that from the earlier days has proved really valuable and then I guess just through us constantly fighting all these copycats. I’ve got a slide that kind of almost shows all the copies that started off after a couple of years of trading, where they were exact copies all the way through to these kind of mutated monstrositie. But it’s almost a perfect example if you start shouting about your rights, your design rights, you’re forcing people to change the design and changing it for at least the better quite often. So you end up with something that isn’t very marketable and that no one would really want to buy because they know they can’t copy our rights and the people who are copying are the people who invest in design.
John: I think there’s an important point there which is that you can never stop the copycats. I often get asked – so how do you stop people copying? The answer is you can’t stop people copying you, the question is whether or not the copies are marketable in their own right and as you’ve said you’ve got no doubt flattering number of different products that…because you started effectively a category of products, so your protection should therefore be relatively broad, but you’re not going to own entirely the rolling child suitcase in the shape of an animal market and that’s been shown in cases and everything. But it’s still valuable to you is the impression I get, because you’ve made it so that (1) you have a reputation for going after people who copy you and that’s…
John: …valuable in its own right…and (2) as you say it’s mainly that the copies have had to move further and further away from you. Yes they probably remind people of a Trunki but they know that they are getting what you would presumably describe as a second rate, or third rate…version and people know what they’re doing.
We’ve mentioned brands a bit and I’m keen to make sure that we cover that off as well. I know this is a designs podcast if you like, but brands are important and I imagine that for you selling yourselves as being if you like the original and the best is an important part of your market strategy is it?
Rob: Yeah in South East Asia that is the product description, the original ride on suitcase.
John: …oh there you go…
Rob: …but as…it kind of does keep you on your toes as well. I mean throughout the years we’ve launched five different versions of the Trunki. We are now on the mark five which is made in the UK and for South East Asia it’s actually made in China as well. But that product has no metal parts, 25 metal screws and pins that used to hold together the previous version were eliminated when we re-shored production back to the UK. So it’s very quick and easy to assemble so our…in the UK…our…it allowed us to manufacture in the UK because the assembly side was a lot cheaper and quicker and then those benefits have come in through replicating that design out in Asia as well.
But you are constantly innovating and trying to make your product better, so much so that we now carry a five year guarantee with our product as well so, we’ve had the products out in the market for 11 years and we are so confident in it now that we offer the five years
John: I certainly know they last…they take quite a hammering from …if my children’s ones are anything to go by. Have you managed to…so Ellie was talking about how you take a bit of IP and you don’t necessarily see beyond your own nose when you are first starting out because you are so dedicated on that one product. Have you seen your IP in a general sense deployed into things like that the new Jurni for example, the newish Jurni product or did you start from scratch with that?
Rob: Well the first big…the second big product we launched was Booster Pack, a car seat backpack and that was all around patents, trademarks, design administration all considering all of those at the same time when we are developing a product. So yeah developing something that can be patented, creating a brand name because although it was a Trunki product it needed to…we wanted people to call it a product name and then design registration just as an extra sort of further protection.
John: Any other success stories around the table, anybody seen IP working as a way of generating income or stopping other people or…?
Milan: In addition to the points Rob touched upon, something that proved very useful for us was…Ceravision was successful in obtaining a government grant three or four years ago, at the time Vince Cable announced it. We came second to I think Jaguar in a competition and part of that due diligence process was quite a close look at our IP and it really did help us, we believe with hindsight, that we have you know a UK company that had spent considerable time and effort in developing a patent portfolio to protect all aspects of the technology was I think one of the factors that helped us to be successful in that process. So it shouldn’t…clearly I don’t want to underestimate it but this was an additional benefit for us over and above going to investors or raising finance in the traditional means.
Martin: All the examples we always talk about, you kindly gave the introduction with BA Club World, they have a patent on that format of their seating, two years from expiry now. That invention has protected space on the plane which has a direct association to revenue, it is the profit engine of the businesses they talk about.
For the designers who may be listening that is where, you know I think it’s fair to say we also screwed up because we just did a project you know as a paid piece of work on a fee which looking back I think was a fair fee for the piece of work but in terms of benefit to our client and the benefit that design can deliver you know it’s enormous. I mean if you multiply out the profits they’ve made versus the fee we charged…you know I think I’ve used the example before…
John: …don’t think about it…[laughter]
Martin: It’s like 0.000000001% you know or less even. But then that’s fine because it’s been an important thing for us, it’s helped us secure other business in this area. There’s a huge risk involved in them launching that product, you know it’s never an easy decision to make and you know hindsight is a wonderful thing.
I think the other example we talk about is Sky and with Pace Micro Technology because Pace invested tremendously in developing the technology behind Sky+. Sky have benefitted hugely through that joint working together with Pace. Through the melee of trying to get that product to market and make it happen nobody protected the spinning lights and LEDs on the front of the box and that’s been replicated by so many, you know other copiers over time all following brands over time. That’s just the case of where you know they’ve still benefited enormously but you know they could have prevented others from following their path and made it more difficult for others to create a reputation for themselves…had they done that…
John: I think this goes to Ellie’s point about thinking about your IP after the context you were so driven to making a box that records the TV and you can pause it and nobody thinks about the fact that spinning…presumably to the extent, I mean no offence to your designers who designed it, functional product feature of how these LEDs to show that it’s playing or recording to turn that into effectively almost a brand for Sky, you know before then used by others as well.
Martin: You know at that point our focus was, you know our research indicated quite clearly that consumers did not understand the value this device brought to them and nobody had experienced time shift TV before. You know they’d never imagined that they could just be watching television, the doorbell rings, press the pause button, run to the door, answer it, speak to somebody, come back press play and be exactly where they were, it’s an incredibly simple thing. But a driver for this happening was that people had to pay for the box for the first time, previously they’d just been given the service whereas this time the investment was so large they were being asked for money to buy in to owning the product, so people were going to think much harder about whether they adopt it or not.
John: And the flashing lights helped…
Martin: Yeah the flashing lights helped and it has been a colossal success story for them which is great.
Ellie: Something similar on the technology or hi-tech side, going back now 12 years we worked with a start-up spin out from a university. They were a team of three and they had a microchip that, was pretty much…it was very obviously very difficult, sensitive things behind it, I won’t say, but a sensitive nose that can sniff out chemical agents in the atmosphere and they’ve worked out exactly where they wanted to apply it in their first sort of market path. But they actually took a pause and thought about all the different possible uses and benefits of what else could this thing sniff out. So if it can sense dangerous chemicals in the atmosphere what kind of atmospheres, if we think about the atmosphere at large and then let’s bring it back down to earth and think about in the fridge or in transportation or in our mouths and working with them we ended up mapping out about seven different industries that this technology could make a transformational difference in.
So they started out as a team of three, they are now a team of about 100 technicians in Cambridge and they immediately went back to their investors once they could show this roadmap of applications over a number of years and their investors were almost, they couldn’t believe their luck, they were thinking we’ve just given you a million dollars and we might now triple that but they are actually doing really well, they’re one of our leading nanotech businesses.
But the really exciting development is one of the ideas is really starting to take shape now, which is like a breathalysers that can detect certain types of cancer from your breath. I mean I know this is a big area at the moment in healthcare, but they started off in a completely different territory and I don’t think they would ever have seen themselves getting into health care but by working that out 12 years ago and sort of the patent protection route that they could then take to think. We know where we could be and we know where our brand needs to be, we know how to optimise the product for all those different market needs when we come to apply it and now we can put together a really, really great sort of robust protection plan, if you like, or a plan that will help us grow and be the leader in those different fields that we want to be. I still think they’re…we’ve worked with many start-ups since then but they’re still, probably because they are one of the first that we worked with but they are doing so well because of it.
John: Yes that’s a good example.
Changing tack slightly, we’ve talked about protection in general terms but we haven’t talked about it in a practical sense. As a designer starting out or even somebody who is slightly more established, it’s hard to know where to start and hopefully this podcast is helping and some of the materials we have on our website will help as well but…you can’t get protection for everything immediately if you’re starting out.
Milan you’ve worked for a company that’s relatively small and you’ve got some sort of great, I mean obviously you guys are more focussed on patents but you have other protection as well, but I mean maybe it’s more relevant for patents because they’re the more expensive end of the IP protection, there are other things that are cheaper. Where do you start with things like deciding how much of your, if you like, budget to allocate to IP for things like international protection, you can protect in the whole world all at once so just tell us how you go about thinking about it.
Milan: So I mean for us the sort of core market that we feel that we will always wish to have patent protection in because you know from our market analysis we feel that there will be or there is demand for our products in Europe, China, Japan and the US. So we will always seek to start any international filings in those four countries or four jurisdictions in every application. Beyond that we try to also think about where our competitors may well be.
So within the lighting space, for example LG has some very good technology in this area, so we’ve historically sought to file patents in South Korea for that reason. Then in previous years we’ve considered sort of low cost manufacturing centres, so thought to have protection there. But the fundamental point from our perspective now is just to be very proactive with the portfolio, because it is very large, for a company of our size there’s sort of over 500 applications. It’s a case of making sure that the technology that’s covered by the patent is still relevant to us, but that the inventors, that the R&D teams still feel there’s some value to retaining protection there from a technology perspective and a licensing perspective going forward. Then thinking about well which markets are we really going to enter into, so currently our focus as a company is on horticultural lighting, light sources that can complement other lighting to improve the taste and yield of a crop and there are certain obvious markets where, you know there’s more work being done in those areas, so for example Holland is an obvious case where the greenhouses are, you know as you fly into Schiphol they make it very clear that they are heavily involved in that sector. So you just need to keep constantly focused on what’s really relevant to the company as the focus of the company changes.
So we’ve moved in terms of our approach away from certain areas and applications of lighting to currently horticulture and that is sort of going to be the way we position ourselves going forward with the technology and the patent protection.
Rob: You can’t apply for a patent on Mars yet can you?
Milan: No not yet. [laughter]
John: Saturn wasn’t there something…because the Cassini probe found some kind of thing on Saturn for a future life… Rob what about you, so you’ve obviously, your main IP rights probably are designs. Now designs range from unregistered designs that are, I mean you’ve had success even in the UK on unregistered designs. I mean it’s less reported but your case, you won on a lot unregistered designs at the first outing. To what extent do you, I mean obviously you don’t plan to rely on unregistered designs, but any tips for the people listening about how one might rely on unregistered designs. You know you’ve been through a case where they were tested, what sort of records did you need to keep, what sort of thinking did you have to have when looking at unregistered and then obviously how do you approach registered?
Rob: Yeah so our case was really based around kind of 2003 and then 2006 when we first started trading so…kind of ten to eight years prior to the legal case. So on the unregistered side the opposition felt that I probably hadn’t kept enough records and therefore they could keep pushing the case through without burning their fingers and weren’t convinced that I had designed every single aspect of the product. So when I stood up in Court and had my say, the opposition had to sit down halfway through their timeslot because I was wiping the floor with them and I had kept all my records so…I was able to prove that certain designs had come about through a process. So unregistered I think in the UK the general consensus is unregistered is more, you have more success with unregistered design that you do with registered which doesn’t sort of really make sense, but that just seems to be the way it is.
A great example of our big case where we did eventually lose the other side had copied exactly the over centre clasp that was on the original product. I had an initial issue with the first version of that where the catches would pop open and I was able to prove that that was my original unregistered design. So when that was ruled in our favour the other side decided that they weren’t going to pay me a royalty for that feature and they were going to redesign it. So they redesigned it badly and have a huge problem with their catches and various problems with the product in the market. So little elements like this can come round and be actual good little nuggets, even the smallest elements of some designs can be crucial to them and if done differently can result in poor performance of the product.
John: Which helps with the marketing overall, because yours is the original and the best because yours isn’t having these problems in the market.
Rob: Outside of design registration I think the challenge around patents is a ticking clock isn’t it, so when you have filed or you have a various periods of time where you need to extend into various countries then it’s really when you start extending globally that it can get incredibly expensive. So it is a kind of a race against time to prove there’s sort of commercial appetite for your product, raise some funds to protect it in those relevant markets, so that’s the real challenge and actually going back in time and thinking about myself and the situation I was in when I first started, I didn’t have any money to invest in patents and even if I had it would have just been the UK granted patent which could have meant everyone else in the world could have copied me because I never had the funds to register the patent in any other territory. So the timeframe that Trunki took to take to market was several years, so there was no money to extend any protection anywhere originally.
John: So in terms of records that you kept for the unregistered designs, for those listening who haven’t maybe decided that they can’t afford patent registrations at all, either patents or registered designs. What sort of records where you relieved to see you’d kept?
Rob: The most helpful was actually going through old CD-Roms because they actually had dates next to them so I was able to know when I had scanned a piece of paper. I didn’t know exactly when I’d sketched it but because it was so long ago, the date of the scan was good enough as evidence that it was at least up until that point.
John: You work on the basis that you don’t have to explain to the audience what a CD-Rom is…[laughter].
Rob: And then another great system is using ACID – Anti Copying in Design, they have a great service for their members where you can upload your designs, unregistered designs to their confidential database and then that serves as date stamp to say when you had officially created that concept or sketch.
John: I think that’s a great point, there are…ACID is one of them and there are other great providers as well who basically just give you that third party independent evidence because you can fabricate system clocks on your computer and so on. So don’t just think a file name being saved on a particular date is necessarily evidence and of course you have amended that document since.
I had a case recently where the other side tried to argue that they had designed something on a particular date but the modified date was actually, so created yes way back, but the modified date was actually the date they’d printed it for the case, which destroyed the, if you like, purity of it, because at that point one could argue well how do know what was the original file and what was amended last week.
It is very important with computer files in particular that you don’t overwrite your original files because I think a lot, I’m no designer, but a lot of CADs the way you might start from an old design and update it and it therefore doesn’t necessarily work as evidence of the date on which you did a particular design and if it is too far back and it wasn’t in fact your design that may damage your case because you may want it to be more recent so that you can still show that you’ve still got the protection now because it obviously expires after a period of time. So sending it to a third party company such as ACID or the old-fashioned way is printed out and post to yourself with a date stamp, registered post with a date stamp, that’s the basic way of doing it.
On the way that registered designs work in the UK these days, it’s actually cheaper to file a registered design for your design if it works, even if you think that registered design is invalid because it may not be new enough altogether or whatever. The government will effectively keep it on their register for you for well the first five years before you even have to worry about a renewal and it’s cost you a couple of quid and it’s worth thinking about that as another of having just purely, as third party evidence for your unregistered protection.
But as I said the independent databases are good as well. There’s a number of different ways of doing it, all we really ask is that you do one of them because it’s really important to make sure you can prove who designed your design, when you designed it and what it looked like. If you keep those records unregistered design can be one of the most effective ways of protecting your rights.
Rob: On the flipside of that an American company tried to sue us for what they thought was copying their product but we keep all the paperwork, all the design development and we were able to show a story of how a design evolved from various options through to the final product. So we didn’t copy them at all because we’d evolved the whole design process through the stages, so keep all your paperwork.
John: Defensively as well. I think that’s a very important point actually. Having done a number of cases over the years the ones who lose most readily are the ones where they just can’t prove how they designed it. They may have designed it independently, they may not have done. But just sitting there and telling the Judge that you designed it independently without any records to back it up, just looks odd. Lawyers become Judges, lawyers expect there to be paper. In the real world I know there isn’t necessarily paper for every stage in the design but the lawyers will expect there to be some form of record of your design process. So make sure you keep them thinking about both defensively and in your favour going…with IP because you don’t want to be…big companies and small are accused of copying. In fact bigger companies are often accused of copying more than the small ones and it is very important to ensure that you do have records of how you came up with your design to show that it was done independently. Because for unregistered design if you haven’t copied it then you can’t be found to infringe it even if the product is identical.
One point that Rob made is that unregistered designs are more successful than registered designs I think that’s right at Court I don’t know that that’s right at the early stages. I think there is an argument that having a certificate showing your design with the date and the official stamp can be very useful for take downs on online marketplaces in other countries, I think Rob mentioned that earlier.
Rob: Yeah absolutely.
John: I’ve certainly, my experience is that registered designs help nip things in the bud more but the harder cases are the ones that go to trial and they can be less successful when you get trial. But that doesn’t mean that they are not worthwhile.
Rob you’ve had some high profile frustrations with the English system. One presumably you still use it, and two have you changed anything about your approach to IP in the UK as a result of your case. What do you do differently now albeit you don’t accept the result of the case necessarily. What have learned from it that you now apply to your practice?
Rob: Well I guess we’re fighting internationally so we haven’t really used the UK system since and we were registering line drawings for the last seven years rather than the very first design registration that…or one of the very first hundred that were in the European system which was the greyscale CAD…the infamous greyscale CAD rendering. So nothing’s really changed…there’s just a lot more uncertainty about what it is you should do and the other side argued that the iPad example was a line drawing showing the absence of surface decoration. So you could argue that if you had a line drawing you were trying to explain that you didn’t want decoration.
Rob: So I mean all the arguments used in our case kind of have a counter argument but it’s a bit confusing.
John: It is confusing I would agree with you on that and I think this debate about whether you can have a line drawing that shows minimalism or is just blank because it could have any amount of detail is a difficult thing for people when they are approaching filing of designs. It’s worth saying that if you’re filing UK designs you can explain whether it is minimalism or open, you can describe your design a bit in the detail of the application. On the European system which is what Rob’s case was about you can’t do that the Court will consciously avoid reading the detail underneath, so it’s worth knowing that if you are out there wondering how to deal with that particular problem. There’s also some guidance that was published by the UK IPO, the UK Intellectual Property Office following Rob’s case to help people whether it does is a separate question but it’s definitely better than nothing in terms of Rob…[laughter]
Rob: Well we helped edit and review that document but…
John: As did we I should hasten to say…
Rob: …yeah the IPO can’t issue guidelines that can’t be defended in the state law so it’s very vague and doesn’t really tell you much.
John: I would agree with that because we also had a hand in that document and I think the frustration is that obviously you’re filing an IP right as an official, as you see it government entity and it is a government entity, and of course it is not that entity that then decides at the end of the day whether or not you’re IP right has any usefulness either because of its validity or indeed whether it catches the infringement. They are only advisory because it’s the Courts that decide whether it is going to work in a particular instance so the governments can give guidance but its guidance covering a…it has to be relatively theoretical I think…
Rob: …yeah certainly more guidance…more guidance than was available in 2003.
John: Definitely…definitely. Martin, Ellie to those designers who may not be able to manufacture themselves, how would you suggest that they best sort of monetise their creativity?
Martin: I mean then you’re into the complexities of licensing and I think even more in a way than patents or IP you need really good advice around what you’re doing around licensing because it is very complicated particularly in terms of the markets that you may or may not trade in and you’ve got to get independent good advice from an expert in licensing around those issues. It’s really really critical and there’s no way you can give anybody general guidance other than that, you’ve got to speak to a specialist and you’ve got to get really clear insight into it…
John: …you can do it, you can licence or you can invent something without having to necessarily worry about making it…but I think some people don’t necessarily realise that you can get…
Martin: …no that’s a good point yeah…
Ellie: …I think a lot of entrepreneurs sort of think that they are the ones that have to take it all away and certainly a lot of academics we’ve worked with certainly may have been the ones with the research and the great knowledge and know-how but not the right people to take it to market and definitely that’s where it is possible but as you say Martin it’s hooking into the right expertise…
Martin: …it is…if we have a start-up or an inventor come in through the door we will always ask the question – What does success look like for you? Because you’ve got to very quickly get to an idea. Are you talking about setting your own business up? Are you talking about developing an idea that you just want to sell? What is it that you are trying to do? Do you realise what it’s going to take and how long it’s going to take? Because it’s all so much longer than people imagine it will be but you know people do win out in the long term and the benefits can be you know plentiful if they get in right. But certainly thinking about that dimension of can I licence the idea, who might my customer for that be, who do I go talk to first. It’s very important.
John: I think that’s point very important, it’s not just going to the lawyers to talk about protecting yourself with IP rights or getting a licence put in place but it is about who actually could use your product, it goes back to something Ellie was saying earlier about thinking laterally about your design, your invention, even if it is a clasp or design it could be a clasp which could then be used for something else that’s somebody has found really tricky to think how they are going to make this clasp safe because I don’t want it to have metal in it because of the danger of swallowing small parts etc. Could that be used in another industry and going and talking to the right people about how even to license it, like application before then working out how one would do it through making sure you’ve got the right protection and making sure you’ve got the right agreement in place to make sure you get paid for it.
Ellie: I think just thinking about that and hearing your own story Rob I think it’s a minefield out there, its where would you start if you were an entrepreneur and we’re so focussed with Spark, Design Council Spark, about pulling right the community together around these entrepreneurs so that we can try and find those experts for them so that they don’t have to try and do that on their own because it is really difficult. I mean there is the IPO out there, there is the British Library IP Centre, Anti Copying in Design is excellent too, but there are also maybe smaller independent players.
There are lots of other players willing to give advice such as yourself, WP, Gowling which is amazing and I think that sort of advice they wouldn’t be able to get otherwise. I think having somewhere to go where they can get all that independent advice I think there’s still something there. People struggle with who are taking products to market that is why as I say you know at Spark we are trying to make that happen.
Rob: And the more people you talk to the better the picture you can paint about what it is you are trying to protect and don’t just go and have one meeting with one IP lawyer, try and talk to more people about it.
Martin: And we’ve also visited trade shows and you go and talk to the channels at trade show you know and learn from those distributors because you don’t have to disclose necessarily what it is that you’ve got, you can just talk about it in general to get some feedback on what that appetite might be in the market. Is this something that’s been there already. What would their approach be? You know how do they buy, just finding things out of that nature could be very helpful.
John: Simply going to a trade show and seeing that other people have got clasps on their product, I will use the clasp as an example, but they’ve got clasps on their products and they may not be working brilliantly and you could say I’ve got a great clasp, I’m not making whatever it is.
Martin: Yeah, Richard Joseph previously he said one of the things he does frequently is just tour, just walk a trade show and see what’s out there. You find a lot of copies…you learn a lot about what’s happening in the market. It can be a powerful way.
Milan: The other practical approach one can take when you are thinking about whether to go licensing or manufacturing is actually to appreciate that actually if I take a certain amount of risk and do some low level manufacturing or find a subcontract manufacturer to make a limited run to then get some interest in the product to get some market presence and then approach some of the larger players with a view to saying look licensing may be something I’ll consider and then your commercial discussions are so much more reasonable and realistic.
Rob: And crowdfunding platforms can help with that as well. If you’ve had a successful campaign that you are able to then…
Milan: …leverage off that.
Ellie: The tricky bit with crowdfunding campaigns is also that you need to have built quite a large following already to start with so again it assumes that you’re open and willing to talk about it or even show something to the public.
Rob: And you’ve got to have the IP in place before you can…
Rob: Yeah I think Martin’s point really key about when, especially when inventors come to us the question is yours about what does success look like, mine is what do you want to be doing in five years. Do you want to be running a company or do you want to be designing more cool stuff? Initially I wanted to be a product designer and I licensed the idea of Trunki to a toy company who didn’t have much commercial success with it. Then got frustrated with my professional career, not working for Martin by then I might add…[laughter] and decided I would have a stab at it myself but if you’d asked me that question at the start I would have said – no I’ll licence it, but it was only through this way you kind of walk through life without a straight line that kind of ended up doing what I’m doing.
John: Cool. We’re nearly out of time but just maybe if each of you want to give one piece of advice, I mean you’ve given lots of advice already. One last tip for the audience of something to do with IP, I’m not going to lead you as to what it has to be necessarily but just something – a take home message.
Rob: I guess I can only say yeah don’t let our case dishearten you. Our registered design has been incredibly successful in Asia, we’ve taken 4,500 listings down to 4,501 all those rejected in the UK by the Supreme Court [laughter].
Martin: Yeah I think the crucial thing is that if you want to do something and you do get it to market, just don’t underestimate what you are going to need to do to protect it. If you’re successful you will be copied to a higher degree that you can possibly imagine and you will spend a lot of time trying to fix that and I have learned a lot from both Rob and Richard and talking to them about their business and what they need to do and it is quite staggering how much work they need to do and it is quite staggering how much work they need to do to defend their IP and as Rob said it’s their brand, it’s everything that gives them value, it’s the business.
Milan: Yeah to echo that point in many ways creating IP is great but registering it and then being able to protect it gives the stakeholders in that business investors, employees, everyone involved, so much more confidence that your business and the opportunity is going to go somewhere. Without it people can sort of get demotivated, so it shouldn’t be underestimated and yes come up with a great idea but then follow it through with the necessary protection.
John: Ellie, last word.
Ellie: I think seeing it as positive is a catalyst for innovation and it forces us to keep on thinking, building on our ideas and building on the business. So if anything it’s sort of thinking differently about IP in itself rather than something that is all about defending something, it is a proactive approach to innovation so I would say let’s think about it in a different way.
John: Great thank you very much. Just to echo some of the comments that have been made. There is lots of free help out there for people. There are I know there are some things on Rob’s Trunki website for some blogs on how to protect yourselves. There is a web page we have called Gowlingwlg.com/designsforlife which has a booklet on how to approach some of these general questions. It is also worth considering talking to your local trademark or patent attorney, they are the people who actually file these designs and trademarks and patents, we don’t do that. But we do work with a lot of people who do and those attorneys will often listen to your ideas and try and help you work out the best way to protect yourselves. We will give you the general advice as well, but a lot of these people will actually give you quite a long consultation without charging in order to establish what it is you need.
You will probably need something so they will probably end up being paid something in the end but they are not normally, at least the ones we work with, they are not normally looking just to sell you as many IP rights as possible, they will just work out what you need and help you because it is a minefield and as Rob says maybe talk to more than one, get ideas from a couple because that will give you a bit of an idea as to how good they are as well, whether they’re right fit for your company.
Thanks for listening and thank you everybody whose participated.
Participants: Thank you