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Qualifications Bachelor in Engineering (Mechanical Engineering) Trinity College Dublin Bachelor in Arts (Mathematics) Trinity College Dublin Postgraduate Certificate in Intellectual Property Law University of Manchester European Patent Attorney Irish Patent Agent European Trade Mark Attorney Irish Trade Mark Agent Background Dermot has more than 20 years experience in the patent profession working in computer-implemented inventions and MedTech. Dermot has worked in private practice in Ireland and in the UK. He has also worked as an in-house patent counsel for Accenture in Ireland and for Dolby Laboratories in Netherlands. Dermot joined Secerna in May 2021 to head up the new Europe office based in Dublin. Specialist Sectors Artificial Intelligence Cloud Telecommunications Semiconductors Date Encoding/Decoding Medical Devices Biomaterials Areas of special expertise Invention harvesting and advising on patent filing strategies for SMEs Drafting patent specifications in complex technical areas of computer-implemented inventions and MedTech Prosecution, oral proceedings, oppositions and appeals at the EPO Providing infringement and validity opinion support Counselling in-house legal departments of large multi-national corporations

Patent Director

Dermot Roche

Dermot Roche

Secerna LLP

To patent or not to patent? Do companies need an IP strategy?

Just like with any other aspect of a business, having a strategy as to how to deal with intellectual property rights (IPR), such as patents, trademarks, copyrights, trade secrets, is vitally important. The entire process of preparing and filing a patent application with a patent office and then dealing with the examination may take a number of years. There are large backlogs at the major patent offices and it may take 3 or 4 years until a patent is granted in the US or in Europe. There are significant costs associated with the patent process also. All businesses from the small individual inventor to the start-up enterprise to the large multi-national corporation should put in a place a defined plan for how to handle IPR. Part of such a patent strategy is to identify new inventions being created. The first step is to designate someone responsible for IP within the organisation – that could be a team for larger organisations or even a single person for a small SME. Regular review meetings should be conducted of the projects being worked on by the engineering or scientific teams to identify potentially patentable inventions.
The first criterion to look out for is whether the project involves any-thing new or different compared to what is typically done in the industry. Some basic searching could assist to confirm if there is a good candidate. From a patent perspective, it is important that the innovation is not merely new but also a significant development that would not have been straightforward or obvious to people in the industry. In some areas of technology, such as software, there is a further criterion of relevance. The new innovation must be related to some form of improvement or advance in the technology rather than in a purely business or accounting or finance sense. An example of a technical advance would be an improved feature of a telecommunications network to enable greater bandwidth for transmission of data. A patent attorney may be engaged to assist in identifying potentially patentable inventions [ ... ]


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