Going Beyond the Prior Art Search

The Experience of a High Tech Sports Equipment Start up Points Towards the Importance of Access to and Trust in Intellectual Property Experts.

Dannie Jost, Dr. phil. nat., Creative Director of tensoriana; physicist and entrepreneur.

Prior art searches and strategic management of intellectual property assets are imperative concerns for not only the existing small and medium enterprise but also for engineering-based start-ups.

Not surprisingly, from the stand point of the intellectual property expert or a patent granting agency, prior art searches are viewed as a must for innovative start-ups and small and medium enterprises. In a recent article on this website, this point is clearly stated from the point of view of an expert. In the case of high tech start-ups, especially in biotechnology, there is also no question that intellectual property must be managed even prior to incorporation or the start of any entrepreneurial or commercial activity. However, these issues, patent prior art searches and intellectual property strategy, are often not included in the business plans of start-ups outside the university environment. In the words of one Swiss entrepreneur, it must be considered negligent not to attend to these matters very early, and certainly before starting any development activity. In his view, intellectual property is as fundamental as financing and marketing, it belongs to business due diligence, and it makes good business sense.

What is the problem?

All engineers engineer with passion; some are aware that their ideas may not be unique and that others may already have had them or gone even further and applied for patent protection. Those who either by personal experience, intuition or knowledge have the automatic reflex to consult the vast repository of technical knowledge harbored in the patent literature, now partially available on the Internet, are the kind of entrepreneurs that need to be cultivated in order to ensure that start-ups have a chance of surviving – be sustainable – in an aggressive and very competitive global marketplace.

Take for example the case of a group of four Swiss engineers who decided in mid-2001 to start a company to develop, produce and market specialized high-tech sports equipment. The company was incorporated in November of the same year. In January 2002 an intellectual property expert was consulted in matters pertaining to prior art, brand name and the address of a patent attorney. In 2004 the company has a revenue of over 2 million Swiss Francs, employs six people full time year round, an additional eight during the four months of production and sells its products in 30 countries.

In the words of this Swiss sports equipment start-up director, it was very difficult to brace the reality in 2002 when the patent expert confronted them with the assessment that what they had developed so far was not significantly inventive or novel compared with the prior art, and that, in addition, they would be infringing on a third party’s patent rights. Being a young team of engineers working passionately on developing a new product, creates a certain emotional attachment to those ideas and products. It was not easy for them relinquish these and to continue their efforts and create a product which is indeed significantly distinguishable from the prior art, and innovative. It is at this point that trust plays an important role.  It is not possible to heed the advice of an expert in another field other than one’s own, without trust since one’s own engineering judgment is, when it comes to prior art, not good counsel.

What was learned?

In the experience of this company, the initial product had to be developed further after consultation with the expert and the patent attorney. The development process became one of iteration between the state of the art, the needs of the consumer and the ideas of the engineering team.

The importance of not just doing a state of the art search and consulting an expert, but also incorporating it in the development process is summarized in the statement of the director of this sports equipment start-up that if they had not done intellectual property homework during the development of the product, they would not exist in 2004.

Trust and accessibility are important for the simple reason that the development engineer or director of a start-up are not experts in intellectual property and may have little or no knowledge of the complexity of the field arising from the complex interaction of legal and technical issues at both a local and global scale. In the experience of this sports equipment entrepreneur, it was not sufficient to have the correct and formal information easily available on the Internet or at a local patent office. It was absolutely necessary to have a dialogue partner, a person or persons who could be consulted quickly informally and at an initial low cost.

What can be done?

The advice is simple: first, the intellectual property strategy should be fully integrated into the business plan. Second, when an engineer has an idea, be it for a start-up engineering company or a product, and he knows what technical problem he is trying to solve, then it is time to consult with an intellectual property expert quickly, informally, and obtain the necessary information to either do the prior art search or have it done by a search specialist.