The Value of IP transcript

Transcription from podcast

Anthony – Hello, I'm Anthony Trenton at Denton Wilde Sapte. I'm here today with Mandy Haberman, British Female Inventor of the Year 2000 and successful business woman based on her inventions. This podcast interview ties in with a seminar held at Denton Wilde Sapte relating to the value of intellectual property and we are going to talk about the impact that intellectual property has had upon Mandy's business. Mandy is the inventor of the hugely successful Anywayup Cup which is a non-spill trainer cup for children and the underlying invention of that cup is the addition of a valve system and to get value out of an invention you need to protect it by intellectual property rights. Mandy, having invented the cup and developed a prototype what steps did you take to protect your invention?

Mandy – Well, I think my very first step was actually to do a search. I went to the patent library. I had a look as best I could at what else had been done, in other words the prior art, but I was well aware that my search was probably not up to much, so the next stage I phoned my patent agent and I had a meeting with him and I explained the invention which in fact is a very simple thing and really only took a couple of minutes, to his surprise, but then I paid for him to do a sort of quick and dirty search, but have it done through the proper channels because obviously they would come up with far more than I was able to find.

Having done that and got the response that there wasn't really much, in fact there wasn't anything on valved trainer cups, I took out my first patent in '91. That was fine. My patent application went ahead and I got to the stage where I needed to take out overseas applications prior to publication. The problem was that I didn't have the money to go ahead with overseas applications at that point, so I had a discussion with my patent agent and decided that the best thing would probably be to stop that application and start again and that would gain me a year. It turned out to be a very big mistake because I lost a year's priority. As a result of that, I ended up with a slightly more limited patent, which over the years has allowed other companies to design around my patent, so instead of being, you know, multi billionaire, now I'm just a modest little millionaire, but I'm quite happy with that, but having applied again bought me extra time and when that one reached the stage prior to publication I was ready and I took out a PCT. That PCT was for Europe, America and Japan.

Anthony – And a PCT is an international application.

Mandy – Yes, a PCT is a very clever device because it effectively buys you, I think it's another 18 months of time, so if you're not ready to go into the expensive part, which is the regional phases, then it's a good way of delaying that expense. So I kept my separate UK patent application as well as my PCT and I think that that was a very good move because patents can be attacked and patents can be revoked and things can happen, but if your UK patent is separate to what else goes on in Europe, it puts you in a better position. So I finally got to the regional phases and paid all the translation costs, etc and they all went through to grant. I did in fact take out a second patent which was an improvement patent and that was in '95 so that went through the same process of patent application, PCTs, etc but it enabled me to take out patent protection in more countries because I had more money available at that time.

Anthony – And once you had secured your patent protection, as you've just explained, can you tell us how you went about bringing the product to market and how you exploited the patent and invention?

Mandy – Initially I thought, as most lone inventors do, that you invent something and then you license it, so I knew that this was going to be a big volume sales product, it wasn't something I could handle easily on my own, so licensing seemed to be the best route and I went to see a lot of companies, but unfortunately none of them actually took a licence, so I ended up walking round with this thing in my bag for about a year thinking 'this is ridiculous, I know it's a really good product and I've got to do something with it', so in the end I teamed up with two marketing entrepreneurs and we decided to set up our own company and by setting up our own company we were able to effectively prove the product. We got it established in the market and it was clearly a success and then once we had done that, it was certainly much easier to then license it to other companies.

Anthony - Yes, I can see that. So that's been discussing how you went about exploiting the fundamental invention, which was the addition of the valve system to the cup and of course that would be protected by the patent rights that we've been talking about. What other intellectual property rights do you have and rely on? For example, how do you protect your designs, the designs of the cup and also the Anywayup Cup and Mandy Haberman brands?

Mandy - Well, I have quite a lot of other intellectual property rights. My feeling is that if I create a wall of intellectual property around my product then if I lose one piece, you know if one patent goes down, there's plenty of other IP around to protect it and that's really useful because if you do a licence for the company and the licence is for use of the trade mark, the designs, the patents and all sorts of other things, if the patent goes you can still continue with the licence, albeit amended, because you've still got the other rights.

So I think trade marks are really important because whatever happens, and patents, let's face it, are quite volatile, if your trade mark is strong, your brand is strong, then you can carry on trading and you can carry on your reputation and you carry on the strength of the company, so really I feel trade marks effectively are the value in the company and if that's what you build up then you've got something really quite substantial.

I do have other IP, I have shape trade marks, I have some design rights and copyrights. I mean there's advantages and disadvantages. Those sorts of rights are cheap to get. Infringement is a criminal offence, which is quite good because you get support from the Trading Standards people and Customs and other avenues. The disadvantages are that you can't rely on them alone if you have something which is very important because I've seen products which, across a crowded room, look exactly like my product and although I have a shape trade mark, when it comes to close examination the company with the look-a-like will make very subtle little differences and as yet I've never been able to enforce my shape trade mark or my design rights.

Anthony - Yes, I mean for sure, the scope of protection of that sort of right is going to be narrower than it is, for example, of a patent isn't it?

Mandy – Yes, but I think it's still a good idea to get as many IPs as you can and that includes design rights and copyrights.

Anthony – Of course the story doesn't end once you secure a patent or any other registered right because you need to police your intellectual property rights by taking enforcement action against unauthorised use. I know that in 1998 you were involved in a very large patent infringement action against Tommee Tippee, which is one of the major manufacturers in the industry and in that case infringement issues were raised but also validity issues arose, as they usually do. I was wondering whether you could tell us a little bit more about what happened and your experience of bringing a patent action in the High Court?

Mandy - Firstly, I have to say it's probably the most stressful thing that you can do, but it was also very interesting. In fact Tommee Tippee was a company that I'd been to in the early '90s and I had offered them a licence at the time based on the prototype, but it wasn't until I had established my product in the market that suddenly it became interesting to them. Certainly, when my product started to take a large amount of market share away from them. It would have been very nice if we could have settled with them out of court but the reality was we, as a company, couldn't have remained viable with them, such a big brand, alongside us selling effectively the same product and if we didn't stop them from infringing, then all the other competing companies would have piled in on top and we wouldn't have had a business left, so we decided that we would go to court to enforce the patent.

What came as a huge shock to me was that I think I, like most individuals, when they go into intellectual property, they think that you get a patent, the patent gets granted and that's the end of the story, but the reality is if you have something that's commercially successful then that is just not the end of the story because people copy you, they claim that your patent is invalid and your patent gets examined again in Court and of course it can be revoked and if it gets revoked then you lose the case and you end up paying both sides' costs, so it really was quite a fright but fortunately for me we won and Tommee Tippee was stopped from selling that particular product.

Anthony – Yes, in fact your case is a very well known case in patent litigation spheres as a classic case where the commercial success of your product was a pointer to the fact your invention was inventive and not obvious.

Mandy – That's right. The prior art showed that way back as far as 1800 and something, people were trying to make a cup that didn't spill, so the need was out there and the technology that I eventually created was old technology in the sense that it existed in baby feeding bottles. There were slit valves in all sorts of applications but nobody had thought to put a simple slit valve into a child's training cup.

Anthony - And that's what the Judge held and as you say you won and were able to obtain an injunction against Tommee Tippee.

Mandy – That's correct, yes.

Anthony – So, all in all rounding up having discussed various types of intellectual property that we have today, how do you summarise how Intellectual Property has brought value to your business?

Mandy – Intellectual property has enabled me to start and grow a business. If I hadn't have had intellectual property, I couldn't have gone to companies to offer a licence. I would have just gone and they would have just said "oh, thank you very much" and taken it. As it is, yes it has involved enforcement and struggle, but as a result I have been able to licence major players around the world. So I would say intellectual property enables business growth, whether its been mine or my licensees, it's created employment and of course it has made me lots and lots of money, which is very nice and whether that's been through trading or licence revenue, I mean both are possible with intellectual property and whilst enforcing your rights is risky and it is incredibly stressful, in a sort of masochistic way, it's also quite fun as well. I've enjoyed it.

Anthony – Mandy Haberman thank you very much.

This is a Technology, Media and Telecoms download from Denton Wilde Sapte LLP.  Visit the website to listen to other podcasts in the series.