Advising a growing business
This fast-growing company distributes renewable energy systems to a range of customers including installers, building merchants, housing associations and large scale renewable scheme developers. It offers a broad product range including Solar PV, Solar Thermal, Heat pumps and more importantly the under/over floor heating range.
The company recently announced that it was listed as the UK’s 5th fastest growing private company. It grew from £700,000 revenues in its first few years to over £15.5m just a few years later. In recent years, it has had a cumulative annual growth rate of revenue of 179%.
The company approached Appleyard Lees to provide an opinion as to whether a proposed new product might infringe a patent.
“We approached Appleyard Lees based upon a recommendation from a previous customer, which was important due to the commercial sensitivity of the project. After spending considerable time over the last couple years looking at new innovative improvements to an existing product, it became clear that, the unique invention did not infringe an existing patent. We needed to obtain good advice to put us in the best possible position”, said the R&D Engineer
Appleyard Lees advised accordingly. In this case, the opinion was provided on a fixed fee basis, given a degree of certainty to all involved.
Providing the opinion, Richard Bray of Appleyard Lees was in almost daily contact with the engineer, ensuring that the advice was tailored to reflect subtle but important developmental changes in the product.
“Being able to quickly and easily get in contact with Richard was great, because it allowed me to discuss product developments with Richard in almost real-time, and for Richard to therefore make sure that the advice provided was as accurate as possible. At the last minute, I completely changed the whole design and concept, of which Richard promptly adapted the patent to meet the major changes. Richards ability to quickly understand my ideas from an engineering perspective, and to subsequently converse its legal implication, was invaluable.”, said the engineer.
The opinion provided by Richard dealt with complex issues, and involved matters in the areas of direct and indirect infringement, both dependent on subtle aspects of the product and its installation. The opinion made the position of the company as clear as possible, which put them on a surer commercial footing.
“I felt that the infringement opinion clearly laid out the facts involved, and where we stood in terms of matters relating to infringement. Richard enabled me to have a good picture of the overall situation, which included potential weaknesses in the patent that was considered. This latter point gave us a degree of comfort, should the patent owner ever allege that the patent was infringed” the engineer commented
While providing the infringement opinion, Richard and the engineer quickly identified that there were numerous features of the product that distinguished it from the product covered by the patent. Although simple, these features were not arbitrary, but were clearly advantageous.
“While working with Richard, we noticed that features of our product overcame many of the problems that had been identified with the patented product. After discussion with Richard, it seemed that attempting to obtain patent protection for those features made a lot of sense. It strengthened our commercial position in general, but also specifically in relation to the owner of the patent in consideration”, said the engineer.
Richard prepared and filed multiple patent applications for the company, all to a tight deadline and tight budget. Again, regular contact between Richard and the engineer allowed the patent applications to be drafted efficiently, even as important product features changed.
“Richard quickly grasped the features of our invention and, most importantly perhaps, how these features gave significant improvements over existing products. We liked the way Richard made this clear in the patent applications. This will no doubt help us in future, when the applications are examined. Even outside of the world of patents, the applications provide a good summary of how the invention is better than those that already exist”, the engineer concluded.
During work with this company, it quickly became apparent that branding and the like associated with the product, and more general aspects, could be protected. Appleyard Lees assisted with obtaining such protection.
Overall, this a good example of how Appleyard Lees has helped a young and thriving company with numerous interrelated intellectual property matters, all within a tight timescale and within a tight budget.
Richard has enjoyed working with the company, and is looking forward to helping with future work:
“It is always rewarding to provide advice that clearly really matters to a company. This is not work that will be filed away in a dusty cabinet and confined to history. This is advice that has a clear and direct impact on the commercial approach of a company to matters relating to intellectual property of their own, and of others. It’s good to see this company taking intellectual property into account in their day-to-day business, and others could learn from their approach”.
The company had some final thoughts on the work undertaken so far:
It has been a delight working with Richard at Appleyard Lees, as his in-depth knowledge of all aspects of engineering and science, enabled him to draft what I believe, is a very strong patent application. The flexibility of Appleyard Lees when faced with such a large change in the invention, so late in the original patent drafting process, was key to a prompt conclusion. Also flexibility on costs was a great help to us, as was the quick turnaround. We think that we paid a fair price for the large amount of work that was done, I look forward to working with Appleyard Lees and Richard Bray in the future, with the other inventions and ideas.” said the engineer