Patents: the right questions to ask

How to properly protect an invention? If there is no magic and universal recipe to apply, there is on the other hand a list of essential questions to ask yourself throughout your project. We asked several experts for their opinion: Yann de Kermadec, innovation and intellectual property management consultant at Julhiet Sterwen; Mathieu Lion, CEO of Mastrad, the innovative kitchenware brand; Vincent Lorphelin, founder of Venture Patents, a company that helps start-ups and SMEs protect their innovations; and Raoul Mallart, technical director of Sigfox, the French start-up which aims to be the world's leading cellular network for connected objects.

> In your opinion, are the benefits of the patent sufficiently perceived in the valuation of an invention and of the company itself?

Raoul Mallart : I have coached technology start-ups and I have noticed that even they are not always aware of the importance of patents. However, it is mandatory to identify what is patentable. Whatever the sector — technological or not — you have to ask yourself what new things you can bring to the market. The patent is an essential element of the valuation of the company, in particular to obtain financing. The more patents you file, the more credibility you have. Obviously, the “inside patent” is also an advantage in terms of image.

Vincent The Orphan : For many, patent = high technology = CNRS or polytechnique = white coat! It is not uncommon for an entrepreneur to start by telling you that this does not concern them. All it takes is a simple demonstration to prove otherwise: the zoom function on a smartphone — so simple and so useful — was a key patent in the Apple/Samsung war, and is now probably worth a billion dollars. However, it can be programmed in two minutes and it has nothing to do with a “white coat” patent! A misunderstanding of the patentability criteria of the patent sometimes makes very brilliant inventors feel like they haven't invented anything. The first questions to ask are therefore: where is there an inventive step? And where to create value?

Yann de Kermadec : Indeed, companies are often unaware of the variety of benefits that filing a patent can bring: security, credibility vis-à-vis investors, advantage for partnerships, external and internal image, strategic asset... And these benefits concern all companies that make technical innovations, whatever their size!

> At what stage of your project should you consider filing a patent?

Y.d. K : There is no general rule. You have to be ready to file a patent application at the right time, so at any time! When a company works, like its competitors, on an emerging subject, it must be ready to file a patent application as soon as the solutions seem feasible. On the other hand, if it is the only one working on the improvement of one of its products, it is preferable that it waits for the end of the development to protect precisely what has been created. Only one thing is certain: we must constantly “think patent”. It is also simplistic to consider patents solely as tools for protecting and promoting technical innovations: they are also a very rich source of technical information and a very powerful design language. Innovation teams that know how to combine these characteristics are very successful.

Mathieu lion : Yes, the bases of the INPI, the American office, Google, etc., are very useful for establishing an inventory of the market and the state of the intellectual property essential before filing. Good benchmarking for a patent mobilizes a person for a week, twice as much for a design.

R.M : The analysis of the case law of patent cases, especially in the United States, is also very useful in drafting a patent application intended to be filed in this country. You have to look at the arguments that were opposed to the patent and how people got away with it.

V. L : If we had to summarize, for me there are three key questions: 1/ What technical problem is my invention trying to solve? (benefits of use) 2/ Is the technical solution proposed by my invention new? 3/ Is the utility of the envisaged technical solution obvious to a person skilled in the art? That is to say, you have to start with the purpose and ask yourself how to get there technically. 

> How to manage the crucial issue of confidentiality before filing?

Y.d. K : Communicating just as necessary should be second nature to innovators. This is particularly true when a patent filing is contemplated. If the innovation is developed with partners, it is then necessary to have the reflex to use confidentiality agreements and, sometimes, to file a patent before starting the partnership.

M.L : You have to find a balance between confidentiality and the fact of being able to canvass business leaders who are very open to innovation. At Mastrad, we open doors to inventors. You can protect yourself at a minimum and date your invention with a Soleau envelope. Another important tip: don't file too early. I have already received inventors who had filed their patent two years earlier without having finalized their invention. For extensions and PCTs [the Patent Cooperation Treaty which helps applicants to obtain protection at the international level, NdR], it is too late. In some cases, it is therefore better to sign a good confidentiality agreement and let the company deposit itself. 

SUMMARY OF QUESTIONS TO ASK BEFORE FILING

— Have I correctly benchmarked my market?

— What do the databases tell me about the state of the art in my market?

"Have I thought of looking at the case law?"

"What else can I bring?" Where is the inventiveness?

— What do I need to implement my innovation?

— What can I communicate on the outside and with whom?

> Let's come to the deposit: what are the points of vigilance for you concerning this phase?

Y.d. K : As far as writing is concerned, I simply recommend that you follow the plan of the patent carefully. It asks all the right questions to innovate and to protect innovations: “What is the domain of innovation? », « What are the solutions that exist in this field? », « What do we want to improve in these solutions? », « What are we proposing as new solutions and, more precisely, as new combinations of means? » and « How will these new combinations of means be implemented? ". It is a common language that allows innovators and patent specialists to cooperate well.

R.M : Regarding the territory, the French patent is in my opinion an essential first step before the extension. My strategy [for Sigfox] is to file 100% of patents in three areas that make up 3/4 of the world's GDP: the United States, Europe, and China. And then we sprinkle, that is to say, we file one in three patents in certain countries, such as Japan, Korea, or Latin America to be present. The questions to ask are therefore: “Where is my market? », « Is developing in such and such a market interesting for my company? ". I had read somewhere that the threshold for filing in a country is one million in turnover generated… We prefer to protect our inventions further upstream, even if it means taking time to assess the relevance of the country.

M.L : On our side [Mastrad], apart from France, we file in China, the United States, Canada and Europe. As far as Japan is concerned, we file our patents on a few key products, but we ignore others. There are indeed countries where intellectual property institutes are slower than elsewhere, very specific laws and counterfeiting is sometimes less frowned upon than in the rest of the world.

Y.d. K : When considering extending patent filing abroad, the costs actually become very high. It is therefore necessary, for each country targeted, to ask ourselves two common-sense questions in a lucid manner: “What will this cost us? and "What's in it for us?" ".

SUMMARY OF QUESTIONS TO ASK WHEN FILING

- Where to drop off? Where to expand?

"Where is my market?"

— Country by country, what will filing for a patent do for me?

— What are the possible strategies and alternatives?

> Finally, what do you think are the essential questions concerning the post-

deposit ?

V. L : For me, there are two main questions to ask: “How can this patent trigger other patents? » and « In terms of heritage, can it become a bargaining chip? ". It all depends on the framework of the company's strategy. For companies based on new technologies, a strategy model can be that of Nest Labs: this American company invented a connected thermostat for the home and, step by step, starting from the basic application, deposited thirty patents. As the home automation market is considered strategic, the company attracted large groups who did not want the patents to go to their competitors. The sales bids have thus risen to three billion dollars!

R.M : In our case [Sigfox], that is to say a company in the development and growth phase, it does not seem relevant to sell our patents which are defensive – we attack counterfeiters if there are any. On the other hand, we grant free licenses, without royalties, for manufacturers of connected objects so that they can operate on our network. The patent can therefore also be an incentive development tool, which guarantees non-aggression between partners.

Y.d. K : When you have filed patents, you must of course manage them! If a patent starts to cost more than it brings in, do not hesitate to withdraw it. When patent management is conducted in an open, pragmatic and respectful way of people, this management strongly informs the company's strategy.

V. L : More generally, I believe that we are at the very beginning of an enormous story of inventiveness. In times of uncertainty, you have to go back to basics. We must return to the culture of a people. However, France has a culture of inventor that we have forgotten. In a few years, we have gone from a handful of well-known start-ups to a whole boom. We are the second Silicone Valley in the world and everything is growing. What is important is desire and talent. There is also cultural specificity: French quality is a mix of design, luxury, finishes, femininity, art of living... It is a competitive asset to conquer a billion new consumers in the world ! The entrepreneurial spirit is learned and it is a collective learning. You have to stop watching the 20 p.m. television news and go to the circles of entrepreneurs twice a week! 

SUMMARY OF QUESTIONS TO ASK AFTER FILING

— What monitoring should be put in place?

— Can this patent be a trigger for opportunities?

— Can this patent generate others?

— Can it become a bargaining chip? A source of income?

— How will I use my patent in my communication?