World Intellectual Property Organization

SPL: International Patent and Trademark Protection to Secure Licenses

Company: Surface Processing Limited, Lower Gornal, Dudley, West Midlands
IP Companies: Barker Brettell for IP protection and Browne Jacobson for licensing
Purpose: International patent and trade mark protection to secure licences 

Surface Processing Limited (SPL) have applied a multi-stage novel chemical process to remove paint, rust and de-grease metallic components for re use since 1994, a process which was kept as a trade secret. One of their main customers is the automotive sector, supplying panels and even whole vehicles for stripping, cleaning and preparation. The process uses waste stream chemicals and therefore has a very positive environmental impact, something which Managing Director Adrian McMurray wants to publicise more, as it opens up new opportunities in the global 'green' economy. 

As the UK market stagnated SPL developed the process to treat other materials like plastic, and soon realised there was a substantial global market to trade in. As a business model SPL didn't want to start new companies, or joint ventures with foreign partners, but negotiate and complete licence agreements to use their technology. 

"I'd not realised how important patent protection was for our company until we started licence negotiation, suddenly we were taken seriously by all concerned". 
Adrian McMurray, MD of SPL

At this point the protection of the process through patenting became an imperative, as this was expected, and demanded, by potential licensees. The Fillip grant was used to protect the SPL trade mark through a community mark, and to patent the process in the UK, followed by a PCT application. As a novice to the complexity of the whole IP protection arena Adrian wanted "clarity and value for money from an attorney who was not only an expert in the technical organic chemistry field but also quick to understand the business imperatives of the company strategy." 

"The first attorney we talked to was a pharmaceutical chemist, which wasn't a perfect match, I struggled with getting over our commercial aims and to understand the patenting process, Adrian commented, however, "it didn't take long to find an attorney trained as an organic chemist who understood our business, the patent drafted was excellent quality, very thorough, and contained the subtleties of our process for all expected (and some unexpected) application areas".

The same quality service continued when licensing the technology to foreign companies, the licence agreements were negotiated with expert knowledge of the technology and included use of trade marks and patents. "I was very impressed with the advice and service provided, also because the IP strategy was matched to our business needs, if we didn't need the patent in all EU territories we were advised not to include them, saving us money and time, something better spent by us on improving our processes. 

SPL's UK trademark has been extended to a community mark
Registered ®

SPL's UK trademark has been extended to a community mark through the first phase of he Fillip grant.

The first foreign licence was a two stage one, based upon the patent, and defining a territorial grant within a 250 km radius for the licensee in the Czech Republic, extending coverage to Slovenia and South Poland. A further licence is under negotiation with a Polish company.

Another important aspect of this case study lies in the use of IP as collateral in raising investment into the company, Adrian is looking to raise investment in order to build a state of the art demonstration plant here in the UK, and use it to attract foreign companies into licensing agreements. He went on to say "Without the IP investors weren't interested, but the patented technology is an incentive to our venture capital community. Our international patent protects our core business, and the community trade mark our trading position, we're getting very well known within the EU, and expansion into Asia and North America will be all the easier with IP protection."

When asked if he thought the whole process was worth it he said "I'd not realised how important patent protection was for our company until we started licence negotiation, suddenly we were taken seriously by all concerned. The licence agreement process was undertaken by real legal experts with a wealth of experience in this field, giving me the confidence that the agreement is as strong and water tight as it could be."

Significantly SPL are now engaged with IP in all it's forms, from monitoring for new process improvement to augment their primary patent, to trade mark registration in the EU and the attention to fine detail required in licence agreements, and will continue to use their patent attorneys following the termination of the Fillip grant.

This illustrates the importance of considering IP at an early stage, SPL were shrewd enough to know that prior public disclosure negates patent protection, and kept it a trade secret, something which now underpins their global expansion strategy.  

 

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© Fillip 2008

 

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