Corcel IP founder Patrick Van Berlo came to James & Wells
Intellectual Property with an energy efficient invention.
He wanted to protect and commercialise the technology in New
Zealand and Australia, but felt he didn't have the resources or
inclination to set up subsidiaries in other foreign countries.
James & Wells partner Ceri Wells explained to Patrick the
concept of licensing intellectual property. Licensing
involves granting rights to exploit technology protected by
intellectual property in return for a royalty payment, usually a
small percentage of the sale of protected products. Patrick
quickly realised that the value of the right to license his
technology was significant. and that ultimately he may earn more
from royalties than he would earn from operating the technology in
New Zealand and Australia - and with less risk.
The first challenge resolved by James & Wells was
determining what elemens of the technology to protect.
Provisional patent applications were filed covering the overall
process Corcel uses to make corrugated cardboard without any
heat. Corrugated cardboard is typically made in production
lines that are up to 100 metres long, and involve steam boilers to
heat starch based adhesives to set quickly enough to hold the paper
corrugations in place. Corcel's technology uses no heat,
which is revolutionary for the industry. It allows far less
energy per square metre of cardboard, no specialised boiler
engineers are required to run the steam boilers, and it is the size
of a small car.
In addition to protecting the overall process, there were some
clever solutions to practical problems involved in the process,
including slitting cardboard very thinly in straight lines.
Normal cutting blades tended to cause "tracking" making
straight lines difficult, and also tended to crush the
corrugations. Patrick designed special cutting blades, which
James & Wells protected for cutting cardboard but also for
cutting any other medium which may have similar issues.
By protecting individual components of the machine, as well as
the overall process, James & Wells ring-fenced the technology,
making it hard for competitors to design around the patents.
In addition to protecting the process and individual components,
James & Wells covered the unique features of the end products
made from the coreboard. For example, Corcel's fruit
boxes will be strong enough to permit additional vertical
ventilation slits, which allow boxes in the middle of a palletised
load to be cooled uniformly in a cool store prior to
shipment. This reduces the amount of fruit lost to
over-ripening during transit.
In addition to patents, the appearance of certain products were
protected using registered designs, and the CORCEL brand was
protected using trade mark registrations.
The end result is a significant portfolio of rights that can be
commercialised by Patrick's company in New Zealand and
Australia and licensed out to international packaging companies, in
return for a passive royalty income.
This article first appeared in Element Magazine and was written
Simon Rowell, a partner in the Auckland office.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
James and Wells is the 2010 New Zealand Law Awards winner of
the Intellectual Property Law Award for excellence in client
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