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Intellectual Property case studies

At Source Advisors we work with clients to identify patentable intellectual property assets, cost effectively manage patent applications and maximise your Patent Box corporation tax saving.

Our unique blend of in-house commercial, technical and Intellectual Property (IP) expertise enables Source Advisors to offer an unparalleled service to our clients.

Here are a few examples of our recent work, illustrating how we were able to help our clients identify, protect and commercialise their IP and increase business asset value.

Packaging machinery manufacture

Source Advisors had worked with a machine manufacturer to identify their R&D expenditure. We realised that this manufacturer had developed a new flow wrapping machine that was being delivered to a customer for evaluation. Even though the engineering team had made significant innovations on that equipment it hadn’t been identified as a potential patent.

Source Advisors was able to advise of the need for a Non-Disclosure Agreement between the manufacturer and their client. We were able to help negotiate this on their behalf. We also filed a patent application covering the numerous innovations contained within the machine.

The Source Advisors difference: For a client who had not thought they had invented anything on the new machine, Source Advisors were able to identify and protect their IP, increase company asset value and create a Patent Box opportunity.

Milking equipment manufacturer

Source Advisors was handling an R&D tax relief claim for an equipment manufacturer. We became aware that their European distributer wanted to launch our client’s new equipment at an upcoming industry event. This would reveal details of the innovation and intellectual property before any protection was put in place. We advised on how to protect this manufacturing innovation through filing a patent and negotiating a Non-Disclosure Agreement.

The Source Advisors difference: Source Advisors had to act quickly. We needed to protect our client’s IP through a Non-Disclosure Agreement, an IP audit and assessment of the innovation, the identification of patentable inventions, the drafting of a fully loaded and technically detailed patent application and filing of the patent application before our client’s innovation was made public.

For more information on Filing for patent protection before public disclosure please contact us

Various clients

Under the Patent Box, a company claiming any corporation tax relief must own the patent. But, for a variety of reasons, the ownership of IP and the chain of title may not be straightforward. This can mean that companies won’t be entitled to benefit from the scheme.

The Source Advisors difference: Source Advisors has been able to resolve issues of ownership, effectively removing a barrier to our clients’ eligibility for tax relief under Patent box. Often the ownership issue has been a “showstopper”, but we can handle the reassignment of patent ownership with the Intellectual Property Office. In addition we have helped clients gain formal IP assignment from subcontractors, even when the original contract did not include an IP ownership clause.

For more information on Intellectual Property ownership and chain of title please contact us

Electronics company

Source Advisors worked with an electronics firm who qualified for R&D tax relief every year, but who had never applied for patents. Source Advisors’ IP Harvest did, however, identify patentable innovation on a product that was already in the market. It is often assumed that once a product is in the public domain that it won’t be applicable for a patent.

The Source Advisors difference: Our solution was to look for and find hidden “trade secrets” in the existing product, enabling us to draft a technically detailed, narrow scope patent application with the UK Intellectual property Office. Our client ultimately profited from both patent grant and sizeable Patent Box corporation tax relief on profits from product sales.

For more information on Patent for a product already in the market please contact us

Window manufacturer

Our client had one patent with only 1 year of patent life remaining. When Source Advisors visited the client’s facility we were able to identify a number patentable inventions around hidden and undisclosed processes and trade secrets. These featured in 80% of their products and allowed patents to be created.

The Source Advisors difference: Source Advisors managed the client’s Intellectual Property Office application for 3 new 20 year patents, enabling 98% of the company’s business revenue to be covered by patents. This meant that they were eligible for Patent Box corporation tax relief every year of the product’s future life. As is often then case the client had not recognised the processes or trade secrets as being inventive.

For more information on A patent with limited remaining life contact us

Systems technology firm

Source Advisors had an award winning technology client who had developed a new product, effectively it was a by-product from one of their existing technologies. They had applied to the European Patent Office but the innovation had been deemed not to be patentable.

The Source Advisors difference: Although the application to the Intellectual Property Office has been submitted a number of years ago it had not yet been reviewed. We identified a technical “blade of grass“ that was contained in one line of the UK application that had not featured in the EPO application. Our IP insight, specialist skill set and the persistence of the client paid off. The Intellectual Property Office application was finally approved on its new narrow scope argument, because there was “no prior art” and because the inventive element was not obvious 3 years ago.

 

Glazing firm

A glazing firm had filed for a new patent. However the process was stuck as the inventive claims were rejected and the application was deemed as withdrawn by the Intellectual Property Office.

The Source Advisors difference: Our combined technical and IP expertise enabled us to identify one technical feature in every manufactured product that was shown in the patent application, but not originally deemed as an innovation by the client. We were able to resurrect the application around that one narrow feature and gain Intellectual Property Office patent grant. We also added IP asset value to the company for the owner.

For more information on Rescuing ‘Dead’ patent applications please contact us

Dairy equipment manufacturer

In working with one of our R&D scheme clients to develop and file a product patent application, Source Advisors was aware that a large European supplier to their industry were interested in the clients inventive and competitively differentiating technology.

The Source Advisors difference: The Ownership and rights are two different things. By signing a worldwide licencing-out agreement with the supplier our client is able to increase their revenues with the Patent Box, as the interested company did not need to own the patent, but did need the rights to use it in the form of a licence.

For more information on Developing a Patent for licensing out please contact us

PVC extrusion manufacturer

A Source Advisors client identified what they thought to be an innovative process used in their manufacturing cycle. Source Advisors believed that this process had elements that were potentially patentable.

The Source Advisors difference: In this case we identified and applied for a Patent on one inventive process step. As the inventive step affected all products during their manufacturing stage, Source Advisors was able to significantly broaden the scope of revenues that went into the client’s Patent Box claim.

Contaminated land cleaning company

A land cleaning company already had a patent on one of their machines but looked to us to broaden the scope of their revenues under the Patent Box. Our strategy was to advocate for a “patented method or process”, rather than the patented machine itself. This worked on the basis that customers are in fact buying “clean earth”, it is the process rather than the machine that is inventive.

The Source Advisors difference: In order to have a successful patent explanation our objective was to identify and validate a set of claims around a product and a system. This enabled a Patent Box tax relief claim for the “widget” itself as well as the “system” that manufactures and/or uses the widget. In this way the client could then claim Patent Box tax relief on all revenues generated from this patented process. As an added bonus the HMRC paid out in 2 days from Patent Box claim as the claim “fitted the box”.

Agricultural business

As we had sight of this clients R&D tax credit claim, we saw potential for patent protection on a process that captured a large quantity of their sales. Source Advisors was engaged for an IP Harvest, an exercise that identifies patentable candidates within a business and gives a clear yes/no answer on likelihood of success.

The Source Advisors difference:

We walked the floors and identified a candidate that covered a large majority of this client’s sales. Our IP experts compared the technology against the prior art and recommended the client file a patent application. Source Advisors guided them through the process and achieved a granted patent within 9 months of filing the application. The client now benefits from a corporation tax reduction on related sales through the Patent Box.

For more information on IP Harvest: broadening the scope of revenues that go into a Patent Box claim please contact us

Construction company

A large multinational construction company had amassed a large amount of intellectual property (IP) over years of providing solutions to complex problems but had realised that it may not be managing and leveraging its IP to its full potential. IT sought our strategic advice to understand whether the structures and processes it had in place for capturing and strategically managing its IP were sufficient to drive value out of the IP it creates.

The Source Advisors difference: We first sought to understand the company’s existing business strategy through a series of interviews. Source Advisors was able to understand how each of its business functions operated, the IP created from its projects and how this IP was managed. Source Advisors produced a bespoke IP playbook for the client tailored to each business function. The playbook explains what processes need to be applied and how to apply them, each business function to better capture, manage, safeguard and commercialise the IP it creates.

For more information on creating an IP strategy to underpin short, medium and long-term business goals please contact us

Manufacturing supplier to retail

A manufacturer won a contract to produce three shelving items for a large supermarket to be shipped and used in specific territories. The client was concerned about the possibility of existing IP rights in each territory, such as design rights or patents, that may prohibit them from taking the contract. They wanted to better understand the risks involved in delivering the contract.

The Source Advisors difference: We carried out a FTO search on behalf of the client which scoured publicly available information, including design rights and patents, to determine if similar products are disclosed and protected in the clients’ territories of interest. Source Advisors discussed the results with the client. We were able to reassure them that they could fulfil the contract. However, knowing their future R&D direction, we identified one patent that was a cause of concern and advised to avoid developing in that particular area.

For more information on confirming Freedom to Operate without encroaching on third party IP please contact us

Global chemical engineering company

The client wanted to file a patent application for a technology that will likely become lucrative for them in the short to medium term. However, they had experienced difficulties patenting in territories such as the US and UK due to the level of prior art. They also operate in a highly competitive industry where competitors regularly try to invalidate patent applications.

The Source Advisors difference: We carried out a patent landscape analysis of publicly available information, such as patents, journal articles, and websites to determine whether their technology was indeed novel and potentially inventive enough to secure a granted patent in the UK and US. The search also armed them with prior art to defend any third-party opposition that may arise. With a green light to file their patent application they received their granted UK patent shortly after.

For more information on using patent landscaping to understand the likelihood of patent success please contact us

Manufacturing plastic products

Source Advisors had completed Patent Box claims for this client over several years. We noticed that the client had a large global patent portfolio that spanned various business units and assets inherited from previous acquisitions. Where a business has an aggressive acquisition strategy, it is common for IP to be transferred to the acquirer as part of the sale. This can often be missed post-acquisition with potentially valuable IP rights owned but not managed in any way.

The Source Advisors difference: To ensure that no opportunities for further tax saving were missed, Source Advisors suggested a ‘maintenance review’ to organise all patent assets owned by the business and conducted a series of interviews with various business units to map those assets to products sold by the business. We discovered assets that the business had owned but were not aware of. The identification of additional patent rights and the portfolio review exercise led to an increase in Patent Box benefit.

For more information on performing maintenance reviews to leverage the value of a patent portfolio please contact us

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