CASE STUDY:THE EXPERTS' ADVICE: three selected individuals offer their advice to the subject of our case study article...

PHILIP COYLE:LUKE HAS made great progress in bringing his idea to a prototype stage. With the ageing population demographics around the world, products for the elderly will likely find great demand in the years ahead.

Luke has already carried out some general searching on the internet and has not found any product as good as his own. However, it is important to carry out a patent database search to make sure the product has not been patented before. There is a large volume of patent applications filed in relation to the automotive industry, particularly in the United States, and the US patent database is a good place to search.

The second aspect to clarify is the question of ownership. It seems the Italian company did not consider the development could belong to them but this needs to be clarified.

Generally speaking, if someone is employed, for example, as a product designer in a company, any products they develop in the business area of the company would normally belong to the employer. This would need to be clarified in relation to the legislation in Italy.

If it is established from the patent search that the product is new, not patented before and Luke has clear title to the invention, he can file a patent application to establish a date for the invention and can then disclose the invention in the market place.

The first patent application would give Luke a period of 12 months to carry out further market research. This period is important because at the end of it, Luke must decide whether or not to extend his basic patent application internationally.

Since the product has global potential and since the market in Ireland is small, international patent protection is essential. In commercialising the product, Luke has the possibility of setting it up to market the product or finding a licensee, in other words, a company which will take on the product and license the patent rights and in return would pay Luke a royalty for each unit produced.

A licensee would also look after the costs of international patenting and enforce the patents against anyone who copied the product.

It is important for Luke to realise that if his passion lies in product design the route of licensing the patent rights to either his existing employer or to another company who may be interested in manufacturing and marketing the product may well be his best option – giving him the opportunity to continue in his existing career.

- Philip Coyle is a European patent attorney for FR Kelly

MARK WALTON:THEY SAY necessity is the mother of all invention; this is certainly the case with Luke's product.

I love his intuitive inventive streak. The most successful inventors/business people often are able to “see” products.

However, it is not always the case that the inventors also have the commercial abilities to realise a product’s successful launch: it is important to decide if you’re one or the other, or both.

Luke’s father is correct in advising caution; his first port of call should be establishing if the product can be patented and what level of protection it can provide, and that it can’t be circumvented. Luke also needs to check his terms of employment. It’s not uncommon, in particular in design firms, that the company’s employment contracts explicitly stake a claim to intellectual property developed by employees in the course of their work.

Unfortunately his consultation with his boss and use of company resources may affect this. Consultation with an IP attorney will clarify his position.

Assuming he has claim to the IP of the product, Luke has two options. He can license it to his current employer or another manufacturer. This is the simplest and most pain-free route to market and one I would be leaning towards. Especially as Luke enjoys his work.

Or he can develop the product himself. Luke will have a lot of work ahead to get a product manufactured, marketed and distributed. He will also have to raise capital – not easy right now.

I advise contract manufacturing this product. The location of the production will be determined by costs and how quickly Luke wishes to bring the product to market.

I would work with distributors wherever possible to reduce overheads while building sales. I would also consider direct sales options like catalogues and TV shopping opportunities.

I would be concerned about Luke’s lack of commercial experience and his real misgivings at this stage. I think he should speak with his county Enterprise Board and Enterprise Ireland and vet his business proposition thoroughly; Enterprise Ireland in particular can help with IP and licensing.

My wife and I worked for four years bringing Voya to market before we could draw a salary and the support and investment of our family was crucial. With mature reflection I am not sure if I would make the same sacrifices again.

With a sound plan and motivation it is always possible to succeed. I would say we never knew we were “entrepreneurs” when we started and Irish people have an amazing resilience and determination to succeed, if temporarily dented by the recession at present.

Just have no illusions about the task ahead. It’s better to work smart than hard.

- Mark Walton is the founder of Voya, an Irish organic cosmetics company

GREG SWIFT:

THIS IS a good example of the type of project Dublin City Enterprise Board regularly receives for feasibility funding. It shows innovation, has export potential and involves a product that needs to be manufactured, so there are a number of issues to be considered.

As a start, Luke must urgently learn about intellectual property (IP) and the IP process. As there are costs involved and consequences to any decisions he may make in this regard, he should take expert advice on this process.

He will also need to do a lot more research to establish if he has a real market. His evidence of a business is based on a hunch at this stage. He will need to establish how many people fit this market niche and from that how many of those will actually need, use or want to purchase the product. Luke also needs to trial it with people outside his circle of family and friends who can offer an independent opinion.

Luke should then address the market-research issues raised and cost the different options. Regarding production at home or abroad, he will need to go to tender. Once he has worked through these items he can establish the money and timescale he will need to see him through. He needs to generate a business plan and how that plan will be funded. This will help him make his decisions on his approach.

Getting funding is a big issue and during the boom years people found it easy to remortgage their houses or get family and friends to invest in their ideas. There is no question that in the current economic climate more work needs to be done to secure funding and ensuring the idea is one that will make satisfactory levels of money.

He might benefit from getting a mentor from the local Enterprise Board network (enterpriseboards.ie) to assist him through the decision-making process.

The important thing is that whoever he is talking to, he can do so in complete confidence.

This is a classic entrepreneurial case of risk and reward based on the decisions Luke will take. I would suggest he gets his IP in place and makes further progress showing clear evidence of the market and develops a business plan on a part-time basis before he gives up his job. A good feasibility study will help him make those decisions based on hard facts and will determine what further support he is likely to get.

- Greg Swift is chief executive, Dublin City Enterprise Board