“We do see the success stories of those who have taken care of their ideas. And we see how badly it can go when it is not done by the book.”
It’s easy to speak out loud when you get a good idea. It is also not very smart. Especially if you want to get a patent and make money on what you have thought up.
“Everything must be kept absolutely secret until the day you apply. This so-called novelty requirement is absolute and global. A tiny mistake can ruin a great deal,” says Katrine Malmer-Høvik, who leads the intellectual property rights group at SANDS.
After a decade as a lawyer at the Norwegian Industrial Property Office and another at SANDS, Malmer-Høvik has seen innumerable examples of how quickly large asset values are lost because the intellectual property rights – or IPRs, as they are often abbreviated – have not been taken care of. Recently she gave a lecture for the fishing industry in Ålesund, where many apply to the Norwegian Directorate of Fisheries for development concessions.
“And the Directorate will gladly make redactions. But many people do not think about the fact that the document contains a nice drawing on the front page, as an illustration. I told them that if this is published in unredacted form before the patent has been successfully obtained, then it can be completely ruinous. At that point, a couple of people left the room immediately and rang the Directorate,” recounts Malmer-Høvik.
It can be enough for a CEO to mention a researcher’s development idea in a small article in the local newspaper. Or the researcher gives a lecture to 100 people and concludes with a few minutes about his or her new invention.
“Then the novelty claim can be blown.
Your competitor, who sat in the hall that day, later becomes aware that you have been awarded a patent. And since they could imagine or have already begun with something similar, then they check the patent more closely.
“Then the search begins for everything that existed before the patent was filed. They find out that the lecture was given before the date the patent was granted and thus have a short route to bring an invalidity action against the patent in order to clear it out of the way,” says Malmer-Høvik.
“When you think of how much of a company’s assets lie in intellectual property rights, and how easy it is to protect yourself, the knowledge about this is astounding low.
So much value. So little protection. Intellectual property right: there is something a little intangible about it. Even the phrase is a mouthful. The media misuse the concepts and use them interchangeably.
“Studies show that 80 per cent of the value in many companies, especially in innovative enterprises, lies in the intellectual property rights – whether it is the patents, the technology or the brains. Nevertheless, the actual protection and management of these assets is woefully inadequate,” states Malmer-Høvik.
Protecting one’s ideas and products boils down to some simple questions: Do you want to protect what you are sitting on as a patent or as a trade secret? Have you protected your brand? How is it protected contractually? Are you protected against your employee taking with her what she has generated during the employment relationship? Have you protected yourself well enough through collaboration agreements so that you retain your rights after the collaboration ceases?
“When you do not know how much value and competitive advantage you have in the form of intellectual property rights, the firm loses out,” says Malmer-Høvik.
Accordingly, there is also a great deal to gain by spending some time with your lawyer.
The freedom to be inventive. “The problem is that many people start without actually knowing whether they have freedom to operate. It is not enough to act in good faith. You have to undertake a freedom to operate survey to check whether you are touching on something that is protected or is worthy of protection,” explains Malmer-Høvik.
This is what SANDS assists with. The law firm works for most industries involved in innovation, including fishing and aquaculture, health technology, technology in general and oil and gas. The group’s seven lawyers manage large trademark portfolios, both in Norway and internationally. They assist in securing, managing and enforcing rights in the areas of patents, trademarks, design, marketing rights and copyrights. They connect engineers and the expertise needed, provide advice, and draft agreements that concern protection and management of the rights. And when many commercial firms and research environments are collaborating on product development, a good lawyer can stand in the middle with a good consortium agreement that balances the various needs for allocation of rights, publishing results and commercial use.
“If the client’s invention can function within one area, the licence is limited in that regard. Or other fields or geographical areas can be included. It is a matter of our helping manage the rights in the best possible way,” says Malmer-Høvik.
Intellectual work or work of art? Intellectual property law is immense in scope. Especially when intellectual works are included.
“Is a stroke on a piece of paper an intellectual work or a work of art? Is a given product inspired by something or a copy? We have long experience in disputes and litigate all types of intellectual property cases, which of course may go all the way to the Supreme Court of Norway,” says Katrine Malmer-Høvik.
The furniture industry is an example of an industry where the boundary between copy and inspiration is particularly tested. For example, Stokke’s legendary Tripp Trapp chair had patent protection from 1972 to 1992. When the patent lapsed, competitors quickly came onto the field. Stokke then had it declared, initially at Fredrikstad District Court and later in a case before the Supreme Court of Norway, that the chair is protected under the Norwegian Copyright Act. The protection lasts for the life of the designer, Petter Opsvik, and 70 years after his death.
“Stokke has been good at protecting its rights,” says Malmer-Høvik.
She works to spread knowledge and explain the opportunities that exist in intellectual property rights. Among other things, the SANDS partner gives lectures four times a year for firms under the auspices of the Norwegian Industrial Property Office. Many come with an expectation that this is extremely heavy material.
“But when they sit there and realise, ‘Damn, if I get that patent I have a 20-year monopoly!’ then they understand it,” says the lawyer.
“Then it becomes tangible.”