Helping with the practical issues relating to those patents, trademarks & copyright aspects from the scientific & business perspectives. For example, if you have a product or process that you think could be patentable, we could give you some preliminary advice on whether or not it’s worth retaining an intellectual property (IP) / patent lawyer, possibly at considerable expense. But please note that we are not IP, Patent or Trade Mark lawyers – just science & technology based research professionals who have been working in the industry for many years.
Case in point: Years ago, we were contracted to register a Natural Health Product (NHP) formulation with Health Canada, which contained a blend of four different herbal extracts, for a specific health condition. Without our knowledge, the president of that company retained a law firm to file a patent for that herbal extract blend for that specific health condition. Instead of the law firm providing advice as the the probability of success of the patent application, they convinced the client that “it was at least worth a shot” and “we will never know for sure until the patent office reviews the filing“. At least $50,000 and a year later, that client found out what we could have told them in a matter of seconds – that herbs, herbal extracts, or their blends are almost impossible to obtain use patents for. We most likely wouldn’t have even charged the client for that advice, since it would only have been for a few minutes of consulting services. Because of this and other previous situations, we decided to offer this consulting service to our client base – something they have been very happy about.
We’ve since been contracted to do things such as trademark searches and filings, review filed patent applications to see if a client should be worried about violating it, if that application is deemed successful, along with our preliminary input on the likelihood of success of that patent application in the first place. And if it does have a decent change of being successful, providing scientific / technical strategies with their similar product / process, so as to not violate that patent.
In various situations, we’ve advised the client not to file a patent application. This is because, once the application is filed, its information is put online by the patent office for all their competitors to view. Therefore, we’ve instead recommended the client keep all of that know-how in-house as Proprietary Information / Proprietary Technology / Intellectual Property (IP). We then help them implement or strenghten the clauses in their Non-Disclosure Agreements (NDAs) / Confidentiality Agreements (CDA) with key employees & subcontractors. In this manner, if that key employee decides to go work for the competition, they can not simply take that proprietary information with them – at least without the potential of a law suit against that former employee, or competitor that they are now working for.
But there are indeed situations were we do recommend retaining a law firm to pursue such patent applications. For example, when a patent would attractive to potential investors. In other situations, we may have felt that a patent application has a decent chance of success, but warned the client that it could be very expensive and quite a lengthy legal process to defend / enforce that patent against others who appear to be infringing on it.
But if you do decide to pursue any type of filing through a law firm, we can recommend specific ones that we feel would be the most applicable. And we have no financial relationships with them, so there is not the possibility for any conflict of interests. Please see our Sourcing web page for further details on referral services.
Why use a consultant?
Weighing the numerous pros & cons of bringing in a consultant vs. tackling it all in-house? Please see our web page “Why Use a Consultant” as part of that critical thinking process. Based in British Columbia, but covering all of Western Canada.