Prior art? What prior art?

Patents that might as well not exist. Or so it seems

 

An article about the Buddi personal tracker system in the latest edition of the always readable IP Insight from IPO provided me with more than usually chewy food for thought.

Entrepreneur Sara Murray – who set up and then sold confused.com – was inspired to develop a child tracker system when her own child went briefly missing in a supermarket. Launched in 2007, it didn’t grab parents (at abettermousetrap.co.uk we could have predicted that if we’d been asked!) but now sells well as a protector of elderly people with a tendency to wander.

Parts of the Buddi story are a breath of fresh air. With exemplary confidence and good sense, Sara Murray only patents when she absolutely has to:

Where possible, Murray protects […] through trade secrets and when she feels anyone could threaten her position, has applied for patents. It is an approach that worked in asking for £4.2 million in funding from angel investors. “Yes”, says Murray, “they wanted to know about our IP, but I was able to satisfy them that we had an appropriate defensive strategy.”

She also keeps a tight control on quality and reduces the risk of copying overseas (and we all know what that means) by manufacturing in the UK. That’s to be loudly applauded too.

But other aspects of the story raise a question or two.

First, the apparent claim that she was the first to think of a child tracker:

But was there any way of tracking disappearing children […]? Sara Murray started to trawl the web for a simple clip-on solution. She found nothing. So in 2005 she decided to build her own.

OK, the critical phrase is ‘simple clip-on solution’. Without a longer search we’ll give her the benefit of the doubt on that one, but in technology terms there are many pre-2005 patents and patent applications for child tracking. (If you’re interested, search in ECLAs G08B21/02 and G08B25/01D.) Child tracking has been an inventor’s favourite since the late 1990s, when people began to latch on to the possibilities of mobile phone and GPS technologies. So Sara Murray was in fact a fairly late entrant to the field.

Nor is Sara Murray’s product the only one on the market. See for example Send4Help, Bubble, Amber Alert and a whole list of products on Amazon.

We’re open to correction here but it seems improbable that they all came on to the market after the Murray product launch in 2007. Could it be that IP Insight has done what many publications do – swallow whole a company press release without doing any digging of its own?

But never mind that. What really, really bugs me is the thought of all those other, prior patents for child tracking devices.

The article makes it clear that Sara Murray threw big money at her project, hiring design teams to create something she believes is unique. She therefore presumably hasn’t licensed in external IP.

So how come all those earlier inventors paid good money for child tracker patents and applications based on the same technology – which Sara Murray was then apparently able to drive a coach and horses through? If I were one of those patentees, or a licensee, I might be feeling rather put out at this turn of events. I might wonder what had been the point of paying for a patent at all.

Even if all earlier applications had lapsed, there ought still to be prior art several feet thick limiting Sara Murray’s scope for claims. So how did she do it? (Maybe she didn’t. Interestingly, the article doesn’t make it explicit that she has patent protection for her product. Is she so astute that she hasn’t actually needed a patent?)

Without wishing to criticise the hugely enterprising Sara Murray in any way – in fact, all hail to her if she can beat the patent system at its own game – I’d be very interested to hear from anyone who can shed light on this puzzling little affair. I’d love to believe there is a simple explanation – except that there is rarely anything simple about patents. It would probably take several million watts of illumination to dispel the doubts many inventors and companies harbour about the value of the patent system to those who have to pay so much to use it.

Posted by Graham Barker


 

One Comment

  • 1 Aug 2011 | Permalink |

    Inventors who start businesses are fundamentally optimists – or they wouldn’t be doing it!

    Working with startups I typically find that initially inventors are convinced their invention is new because there is nothing on the market – it doesn’t occur to them to look up patent or research databases.

    As a project progresses, focus turns to “what can I protect”, a subject which patent attorneys in general seem very willing to take their fees to work on. Inventors don’t want to find something that blocks their freedom to operate so either don’t look or don’t look thoroughly. For many inventions (or non-inventions) it can be a very difficult task to identify all possible prior art…

    Patent attorneys are experts in this, but don’t seem to push prior art searching – after all, if they prove that the inventor doesn’t have freedom to operate, their client might no longer need their services.

    Where relevant patents are found, inventors will convince themselves that they (probably) don’t infringe or that the patent is “obvious” so wouldn’t stand up in court. This seems like a valid approach because other founders tell them that they have have done something similar and never been approached by the patent holder.

    Just as it is hard for inventors to find prior art, it is hard for patent holders to find infringers (especially when the company has no profile and no products on the market) and many patent holders will have neither the time nor resources to pursue infringers, especially overseas ones. It isn’t worth suing a startup (with few or no resources and no revenue from the infringement) either, so why would anyone bother? Much better to wait until the company has revenue streams to attack, and few inventors look that far ahead.

    Investors are very keen on their investee companies having patent protection, which further drives inventors to focus on protection.

    The result of all these factors is the situation you describe above – where patents can appear to be overlooked or ignored.

    However, I feel that the patent system does little to help and many patent attorneys effectively encourage inventors by constructing arguments about why existing patents shouldn’t stand or don’t apply.

    No wonder inventors are left feeling poorly served.