Case Study

The role of intellectual property & patent information in successful innovation, production and marketing by Mandy Haberman.

Abstract

The process of innovation, from initial concept, development, pre-filing patent searches and patent application, through to production, marketing and establishing and protecting the product is described in relation to the my experiences as a successful inventor and entrepreneur.

The main product referred to is a non-spill drinking vessel which solves a long recognised problem in a simple and practical way, reflected in its success in the marketplace around the world. The crucial role in the process of a sound patent search before filing well-drafted patent applications is described, and the use of patent searches before deciding to support other innovations.

1. Introduction: the non-spill drinking vessel

I am an independent inventor and entrepreneur. In general, I develop my products, sub-contract manufacture and establish them in the market place before eventually granting licenses. To date, my most commercially successful invention has been a non-spill drinking vessel, operated by the sole use of suction. This technology has been widely applied to children’s trainer cups.

2. Concept and technical solution

The Anywayup Cup, as it has become known in the UK, is a totally non-drip, non-spill children’s trainer cup. Even if vigorously shaken, or dropped, it will not spill. Prior to my invention, there were other cups in the market, which could be manually shut off for travelling, but none that automatically sealed between sips.

I first had the idea for this when I was at a friend's house with my daughter in 1990. A visiting toddler, using a conventional trainer cup, left a trail of blackcurrant drink stains across the immaculate cream-coloured carpet. That made me start to think how trainer cups could be improved to solve this problem.

Instead of the usual rows of holes, the Anywayup Cup has one large opening. Under this a soft, slit-cut, membrane valve is moulded. When the child drinks, the valve opens and liquid flows but as soon as the child stops drinking, air rushing back in, pulls the valve back shut every time. It is a very simple solution to a well-known problem, but it had evaded the industry at least since the 1800's.

3. Prior art search

Before embarking on development I not only investigated the commercial market thoroughly but, prior to proceeding with my initial patent application, instructed my patent agent to conduct a search to see if there was any prior art. Nothing of significance was revealed so I proceeded with the project.

4. Intellectual Property Rights

I now have registered trademarks, design rights and granted GB, American and other overseas patents, covering a range of embodiments. The patents include both one and two-valved vessels, both outwardly and inwardly domed valves and arrangements whereby the valve system is both integral to the lid or a separate component, for example GB2266045 and family members such as US6102245 and EP0634922; and GB2304545 and family members such as US6116457 and WO97/08979. For our own production we use a single integral valve, downwardly domed against the direction of flow for maximum spill resistance. It requires no assembly, is easy to clean and has no dirt traps.

5. Production and marketing

We launched the product from UK production in 1996 and took the market by storm, achieving a turnover of approximately £1 million in the first year. However, getting into the supermarkets was not easy, as they were reluctant to deal with one-product companies. We overcame this by posting a full cup of blackcurrant drink to the buyer of a major supermarket chain with a note to say, If this reaches you without spilling give us a call! It did not spill and we were on the shelves within weeks. After that, it snowballed.

I subsequently granted manufacturing and distribution licenses to V & A Marketing Ltd (UK) and to The First Years Inc (USA). Sebastian Conran designed our current range, which was sold in 70 countries world-wide under various brand names. A total of 7 million cups were sold in 1999 and around 10 million were forecast for 2000.

6. The marketplace and litigation

Unfortunately a successful invention from an outsider can upset the status quo by taking a large chunk of market share from established companies.

Between 1992 and 1994, I approached all of the leading UK nursery product companies with my prototype. There were no sensible offers. Not because my product failed to answer the market need, or because it was the wrong product at the wrong time but, in my opinion, because industry is loath to invest in new ideas until competition forces its hand. Generally, it is quicker and cheaper for them to spot successful new products in the marketplace, than it is to research and develop their own products from scratch. It could be said that the current system encourages them to do this, because the cost of litigation is prohibitive for most independent inventors or fledgling companies.

In 1998, just as we were starting to achieve significant market share, a leading UK nursery product company brought out an infringing product. Despite the personal financial risk, I took them to the High Court (with my licensee) to enforce my patent. Happily the judge found my patent to be both valid and infringed. The infringing product was removed from the market.

However, outside the UK there were many more infringers and further litigation has been necessary elsewhere.  When I took action in the Netherlands, I found their Kort Geding procedure to be inexpensive, efficient and fast. In addition, their cross-border injunctions are enormously helpful. If companies in the Netherlands are being supplied with infringing products from overseas, their system allows for that supplier to be rolled into the action. This enabled me to curtail the activities as a major Thai company that was exporting products all over Europe.
 
7. Concluding remark

Sadly, the way that most patent systems currently operate, litigation forms a major part of the small inventor’s life, sapping both resources and creative energy that should be put to better use. Until the system is improved, home-trade and industry will continue to suffer.

Elsevier Science Ltd. (2001)

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