Patent attorney, Nicholas Braddon, discusses trends in material innovations

Materials World magazine
,
2 Mar 2016

Nicholas Braddon is a patent attorney specialising in the physical sciences and engineering for Barker Brettell, UK. He discusses the role of the patent attorney, the UK steel crisis and R&D with Simon Frost. 

What does a patent attorney do?

Mainly, I help clients obtain patents to protect their inventions. The owner of a patent has the right to stop others from practising the invention protected by the patent in the territory covered for as long as the patent is in force. In the UK and most other countries, a patent can be kept in force until 20 years from the date it was filed. The core skills of a patent attorney are drafting patent applications and then arguing with patent offices to obtain a patent. Each patent office searches and examines the applications to determine whether a patent can be granted. The claimed invention must be new and involve an inventive step. On occasion, patent attorneys help clients to attack the validity of competitors’ patents. I also assist and advise on protecting the appearance of products with registered designs.

What is your scientific background and how did you transition into law? 

I studied materials science and metallurgy at university. While I was studying, one of my fellow students mentioned the possibility of being a patent attorney. I researched the profession and liked the sound of what I read. Generally, there is stiff competition for trainee patent attorney positions. It took a while and many applications to get my first job in the patent profession. I then had to take professional exams over the next few years, in order to qualify as a UK and European patent attorney. I am glad I chose to enter the profession – it is an interesting, intellectually challenging job with good career progression and prospects. 

How do you turn a concept into a published patent?

The first stage is usually to meet with the inventor to gain an understanding of the invention. I then draft a patent application describing the invention and claiming the key aspects of the invention that we want to protect. Next, I file the application at the patent office. The inventor can then publicly disclose the invention without prejudicing the patent application. A few months later, the patent office will issue a search report indicating earlier documents that it considers relevant to the novelty and obviousness of the claimed invention. The patent application is published 18 months after filing. At this point, any third party can see its content. After publication, the patent office will issue an examination report setting out why a patent cannot be granted for the claimed invention and setting a deadline for response. I then write back to the patent office amending the claims and arguing why the patent should be granted. If the patent office accepts my submissions, it will grant a patent.

What advice would you give to a scientist putting forward a patent application? 

A fundamental requirement for a patent to be granted is that the invention must be new – it must not have been publicly disclosed in any way prior to the filing of the patent application. If, for example, you were to disclose an invention in a scientific paper before filing a patent application, that disclosure would count against the validity of the patent application. Make sure you file your patent application first, and then you can publish your papers and talk about it at conferences without compromising the validity of your application.

If you are working somewhere with links to a technology transfer or commercialisation department, I would recommend that you speak to them about protecting the invention before publishing papers or talking about the invention at conferences. If you do not have access to a technology transfer or commercialisation department, then contact a patent attorney. A searchable directory of UK patent attorneys can be found on the website of the Chartered Institute of Patent Attorneys (www.cipa.org.uk).

What design trends have you noticed? 

Many inventions are motivated by a desire to do something more quickly, less expensively, more efficiently, using less energy or a combination of these. Changing legislation and increasing environmental awareness also have an influence on the direction of R&D. It seems that energy efficiency, management and harvesting are important trends in research and design today. Another is recyclability.

How will the crisis in the UK steel industry influence research into materials? 

With major steel companies struggling so badly, they are unlikely to be able to fund as much university research as before. As well as having to find new sources of funding, there will be fewer opportunities for researchers to engage with the steel industry in the UK. 

It seems to me that it is almost impossible to make a profit in large-scale, commodity steelmaking, particularly in the UK. As I understand it, global demand has weakened, while supply has not been cut back, so prices have fallen and margins have been squeezed. On top of this, steelmakers in some other countries enjoy advantages in terms of lower energy and labour costs and/or more state support. 

However, the outlook for research is not completely bleak. Innovating is one way of obtaining a competitive advantage and protecting the resulting intellectual property is the best way to protect that competitive advantage. In steelmaking, there may still be opportunities for innovative UK companies to thrive in niche, high value areas.

How can the UK continue to punch above its weight in R&D?

I do not know how the UK’s spending on R&D compares with other countries or whether the UK gets a good return on investment on its R&D spending. But, from my professional perspective, I would encourage high R&D spending, as this would most likely lead to more intellectual property rights being created and registered. 

Having an intellectual property strategy should be an integral part of any business plan. Research shows that businesses that protect their intellectual property are more likely to succeed in the short term and grow in the long term. Therefore, the UK economy (and not just patent and trade mark attorneys) would most likely benefit from maintaining or increasing R&D spending.