Proactively managing a comprehensive IP portfolio for a provider of advanced carbon fibre processing technologies
Established in 2002, Surface Generation enables manufacturers in the aerospace, automotive and consumer electronics sectors to optimise their use of advanced composite and polymer materials through its patented Production to Functional Specification (PtFS) technology. PtFS allows users to manufacture a huge range of products including aircraft wings, consumer devices and automotive components much more efficiently than is possible using traditional processes by adapting heating and cooling levels in real time to meet the exact requirements of each part. By adopting PtFS, Surface Generation’s clients save costs, energy and produce significantly lighter weight products.
Due to the nature of Surface Generation’s technology it can be used by, and derive benefit for, any manufacturer working with advanced composite and polymer materials. Ground-breaking when it was conceived, PtFS technology has been protected on the conceptual, system and component levels with a broad family of patents. The price of such comprehensive protection is that it is costly for Surface Generation to continually maintain and renew their portfolio. By way of example, renewal fees on granted patents increase year-by-year, meaning that a mature portfolio is also an expensive portfolio.
Surface Generation was looking for an Intellectual Property firm to help them manage their IP strategy. They wanted a firm who would not only understand the PtFS technology, but also the myriad of sectors in which they operated internationally. They also wanted a proactive, personal and consistent service - an extension of their research and development team.
Why Vault IP was chosen
Having worked with Phil Sanger of Vault IP in a previous role, Surface Generation was already confident that Vault had the sector and international patent experience they required. However, what made Surface Generation ultimately choose Vault was the firm’s approach to managing client relationships.
Vault’s personalised, proactive service that centred around face to face engagement appealed to Surface Generation, who were keen to avoid a deluge of arms-length emails. In addition, the fact that Vault was also an SME and could therefore understand the challenges of a business of their size; such as the need for predictable and controlled costs, rather than unpredictable bills, made them the right choice for Surface Generation.
Working with Vault IP
Surface Generation has been working with Vault for over 4 years and during that time has benefited from Vault’s proactive approach to patent portfolio management.
Initially, Vault looked at how they could minimise the overall cost of Surface Generation’s patent portfolio by taking a different approach to renewals. Several providers were compared, and one selected which combined the right level of service at a reduced cost. This resulted in a near 40 percentage reduction in what Surface Generation was paying for their portfolio without any changes to the patents themselves. The second stage was to involve Vault in the decision-making process for renewals. Vault’s attorneys understand the scope of each patent and the applicability to Surface Generation’s products, and can therefore advise on the commercial value of each patent before the renewal fees are paid. This way, the portfolio is under constant review.
Once a month, Vault visit Surface Generation to not only undertake a joint review of the IP portfolio but also to immerse themselves in what is happening with the day to day business by ‘walking the floor’ and talking to the development team. This type of contact enables Vault to adjust the patent portfolio directly in line with the business’ priorities, such as recommending which new patents need to be filed, and in which international markets, which should be retired and whether there are any competitive threats that need to be managed. Not only does this ensure comprehensive protection across the multiple uses of Surface Generation’s technology, it also maximises the amount being spent on the patent portfolio.
In addition to ongoing active portfolio management, Vault’s attorneys also bring their business acumen to bear by supporting Surface Generation with ad hoc, time pressured work. Acting as the IP expert and an extension of the Surface Generation team, Vault interfaces with either in-house or external lawyers to answer pressing IP questions on the patented technology. Most recently Vault helped Surface Generation in forming a commercial agreement with Victrex, a world leader in High Performance Aromatic Polyketone Solutions.
In short, more of the same. However, as Surface Generation’s patented technology continues to gain traction globally, the greater the need is for Vault to provide guidance on an international filing strategy that takes account of the risks in different sectors.
Vault has also set up a patent watching service so that they can jointly review any potential threats with Surface Generation and act accordingly.
Quote from Ben Halford, CEO
We value the relationship we have with Vault IP and find their personal and proactive approach, coupled with their extensive international sector experience that we need, almost unique in the IP industry. It has been a refreshing change to work with a dedicated contact who really understands our business, and we feel confident that we have the right patent strategy in place as we grow and evolve.
Ben Halford, CEO, Surface Generation Ltd.