4.9 Intellectual Property

A brief history of IP at SOLA Ray Price

The founders of SOLA were conscious of the importance and value of trademarks and patents. The SOLA trade mark was registered in Australia in 1965 five years after the company was founded. The first patent filings, for optical equipment invented by Don Schultz, were made in the 1968. The local Adelaide patent attorneys, Madderns, filed in Australia, USA, UK, France and Germany and the patent was granted in each place e.g. as US3592525. The old files show that a patent agent was hired to provide information about optical patents filed and granted in Europe and USA. When Pilkington purchased SOLA in 1979, there was access to an organization with a full range of patent services in-house. A Pilkington attorney visited Adelaide and Petaluma once or twice a year to talk to inventors about getting patent protection for new discoveries and one or two new applications a year were filed in the country of origin of the research. Trade mark applications also increased and they were generally the responsibility of regional marketing groups under the supervision of the trade mark staff at Pilkington. Regional offices had a budget for trade mark filings but the bottom line was generally more important than systematic international filing of new trademarks. Details of newly published patents were provided to staff through a monthly bulletin, and there was also a translation service for German and French patents. There were a number of court cases over patents and a particularly significant contact lens case resulted in a victory for SOLA and the company acquired the offender, Paragon Optical, as a result.

Sale of SOLA

When SOLA was sold to AEA Investors in 1993, Colin Perrott, then Vice-President, Research and Development, took over responsibility for patents and trademarks from Mike Lee and Colin Chappell at Pilkington's Lathom offices in northern England. At the time of the sale, many SOLA staff visited Lathom to look at the facilities and to investigate the services provided and assess what loss of access would mean for SOLA. As the only person within SOLA who had a purely information based role I was asked by Dr Perrott to provide patent information services to the company and to ensure that nothing was lost in the intellectual property area with the transfer of ownership. I was also asked to liaise with the patent and trade mark attorneys used by the company in Australia.

I visited Lathom in March 1993 and reported on the visit in Communication C93/44 dated June 15 1993. There were about 8 to 10 members of staff, including a number of trained patent attorneys, in the Patent Department. My major impression was of the piles of paper on every desk and of the problems of finding a file. There was a Patent Department Library with another 2 or 3 staff which served the group. This library received a large number of patent gazettes from around the world and had a large collection of paper copies of patents. The main activity seemed to be manually paging through the gazettes to find newly released patents of interest to the company, and then ordering copies through the British Library patent service. Each month the patent library staff produced a listing of about 20 to 30 new patents called the Ophthalmic Bulletin. The Bulletin was distributed to key SOLA staff and the research sites and it included a full copy of each patent listed. There was very little use of electronic patent databases which had started to appear even though appropriate equipment had been purchased. The Pilkington Library which was separate from the Patent Library provided some newsletters, an interlibrary loan service, and library services to SOLA. There was also a very formal confidential reporting system for managing internal reports, and an off-site company archive which had recently been contracted out to two former staff members. My brief was to continue the services provided where it was cost effective and justified.

Transfer of files to external attorneys

The Pilkington attorney most concerned with the SOLA patent work was Tom Jackson and he had retired some time prior to the sale of SOLA. Colin Perrott contracted Tom to be the go-between for the two companies and Tom collected all the SOLA cases to be transferred from St Helens and brought the files to Australia. Tom met Colin and I in Adelaide and the three of us spent several days going through the patent and trade mark files with Tom explaining the status of each case. We then took the files to Melbourne and Colin asked Pilkington’s attorneys in Australia, Phillips Ormonde and Fitzpatrick, to transfer responsibility for all cases and set them up in their systems.

The agreement with Pilkington was that they would work in collaboration with SOLA for 6 months and then we were on my own. I started by setting up a process to produce a new patent information bulletin. Subscriptions to some major patent gazettes were purchased, as was a new service offering complete newly issued WIPO and European patents on CD. Copies of patents were available on microfilm through the local Patent Office and I started to pay regular visits to the city office to get copies of new patents. Paul Jones from Phillips Ormonde began to fly over from Melbourne once a month and inventors with new ideas came along to the meeting with Paul. Paul being a good businessman thought that most things were worth drafting as a patent application and SOLA started to file many more applications than it had done under the Pilkington regime. Paul was a cut and paste expert and many of the applications included large slabs of text cut from earlier patents and this caused major problems for SOLA at the prosecution stage as patent examiners frequently refused applications on the basis that the new application was similar to an old one. The SOLA and Fauldings accounts became important enough to Phillips Ormonde for them to open an office in Adelaide and a good working relationship was established with the staff in the Adelaide office.

In the USA, Colin gave responsibility for patents to Peter Coldrey, newly appointed R&D Director in Petaluma, and Lesley Gardner, USA Marketing Manager, took responsibility for trademarks. While Colin provided nominal support to Peter, Lesley and I, he was far too busy in his technical role for the company to take much interest and he tended to look at the bottom line on the monthly financial statements and complain if too much had been spent. In the USA, there had been problems with the patent attorneys used in the past (Harris Zimmermann) so Colin chose companies handy to the Menlo Park office. Burns, Doane, Swecker and Mathis were asked to handle our patent portfolio in the USA. Pilkington’s trade mark associates, Wise and Shepherd, were in the Menlo Park area and they continued to act as SOLA’s trade mark attorneys.

Trade Marks

The patent portfolio transferred to SOLA was well organized but the same could not be said of the trade marks. The files were incomplete and there were plenty of problems with many of the decision being made by marketing staff who often treated trade mark issues as low priority matters. From knowing little about trademarks I quickly found myself making company policy, taking urgent decisions on trade mark matters, and trying to solve the many issues around SOLA's trademarks.

Reorganising the portfolio

Pilkington had been fairly casual about their trademarks and that created a problem for SOLA. With no central control, regional offices were making their own decisions about trade mark filing and renewal, and trade mark ownership, especially in Japan, USA, Europe and Brazil. In Turkey, the SOLA mark was owned by the distributor, and in Japan the SOLA mark had been lost through failure to pay the renewal fee. There was very patchy registration of marks used on major products such as Graduate / VIP, Solaspheric and Slim-Lite.

An early decision was made to centralise all filings and renewals and to bring ownership of trademarks into the new company, SOLA Group Limited. The SOLA trade mark had been registered in just a few major markets and the company needed broader protection for the mark. A further decision was made to register the two company marks, SOLA, and the eye device (the S in an eye logo, often called “the bug”) in all countries where there were significant sales.

Registration of the two company marks was gained in most countries although a few countries rejected SOLA alone but allowed the two combined in one registration. A number of other international companies were using a SOLA trade mark for goods in the same trade mark class (Class 9 for scientific goods and equipment) and several co-existence agreements had to be set up, most notably with SOLARIS, a USA IT company, and an Austrian instrument company SOLA-Messerkzeuge GmbH. It was very fortunate that these filings were made in the mid nineties because the growth of interest in solar energy and UV protection meant that many companies wanted to use trademarks with the word “solar” for sunglasses and photochromic products and SOLA filed a steady stream of trade mark oppositions based on our prior registrations.

Ownership of SOLA trademarks

The decision to transfer IP from Pilkington Visioncare to SOLA Group Limited was premature because the company was floated under the name SOLA International Inc less than 2 years later. Trademarks which had been assigned to SGL now had to be reassigned to SII, at a cost of tens of thousands of dollars.

Trade mark problems

Conflict with CBS

The S eye device had never been registered in USA and it was one of the last applications to be filed during the push to protect SOLA’s trademarks. The mark was approved by the US Patent and Trademark Office and advertised for registration in their Gazette. Within a few weeks, a writ was received from the US motion picture company CBS demanding that SOLA cease using the device, withdraw all applications throughout the world, and pay CBS’s legal costs and damages. There is no doubt that the CBS logo is quite similar to the SOLA eye device however the goods are entirely different and there could be no conflict about the origin of the goods in a consumer’s mind. Some quick checks showed that even though the CBS logo was well-known it was registered in just 3 countries, USA, Canada and France. Our lawyers were able to respond in a positive manner to the threat, pointing out the large number of international registrations of our logo and the long period of use. CBS backed down very quickly and settled for an agreement that SOLA would only use the eye device with the word SOLA in USA.

Conflict with LOLA

LOLA is a European car company and on a number of occasions they sought to use the brand as a merchandising tool on goods such as sunglasses. Pilkington had opposed the extension of the registration to cover optical goods and a settlement was reached under which LOLA was not allowed to use their name on optical goods. However LOLA seemed to go back on the agreement quite regularly, filing extensions to the range of goods covered by LOLA in a number of countries. They were forced to withdraw in each case and a watch has been set up to keep track of future filings of the LOLA brand.

Percepta

Extensive but inappropriate clearance searches were performed when the Percepta trade mark was proposed. Unfortunately no checks were made in central European countries where Essilor was using a similar mark, Perfecta. SOLA was forced to license the rights to the AO bipolar patent in exchange for rights to use Percepta in Europe.

Eclipse

The Eclipse progressive lens has been sold extensively in Latin America but not elsewhere. When Essilor proposed to release a new product branded Ellipse they contacted SOLA to see if the situation could be resolved to enable Ellipse to be used in Latin America. Brazil objected very strongly as Eclipse was their best selling product, and steps were taken to file registration applications in countries where sales were strongest. Essilor eventually chose a new brand name and the problem disappeared. There was also a problem with this trademark in Mexico where a distributor filed the mark in his own name. The distributor put up quite a fight and it went to appeal when the decision went against the distributor.

Graduate/VIP

North America had been allowed to brand the Graduate progressive lens as VIP but this was a problem with increasing internationalisation of manufacturing during the late 1990s. A number of attempts were made to change to the use of one trademark for the product, but unfortunately Polaroid had extensive use of the preferred VIP mark outside North America so it was unavailable. Graduate had been registered in USA but it was allowed to lapse in 1992 and Sterling Vision filed Graduates for optical goods in 1998 in the USA and this blocked changing everything to Graduate. Sterling was approached to see if they would sell but their price was far too high and the situation remained unresolved.

SU-NA in China

The Chinese character version of SOLA was SU-NA. A small Chinese company based in the rural city Kunming filed and managed to register the trade mark for optical goods and they threatened to sue SOLA for trade mark infringement. It took many years for the position to be resolved however Kunming Tongxie’s rights were eventually cancelled and SOLA’s rights to use of the trade mark were confirmed.

The American Optical portfolio

SOLA purchased American Optical in 1996 and the sale included a small number of patents, most notably the bipolar progressive lens patents, and a large number of trade marks. An initial assessment of the AO patents by Colin Perrot showed that most of the patents were old and of little further value. However the bipolar patent still had some 10 years of life in it and it had been used successfully to threaten and sue many American Optical competitors, including SOLA, and it was one of the factors in the decision to purchase the company. (A suit from AO had arrived as SOLA was being prepared for listing on the New York Stock Exchange, particularly bad timing for SOLA, and SOLA settled so the matter didn’t appear in the prospectus). John Winthrop was the only remaining inventor with AO and he produced several more patent applications, including the progressive design for small frames, using the attorney David Fishman from the firm Cantor Colburn.

Under the sale contract SOLA was licensed to use the trade marks in the AO portfolio on ophthalmic goods and some of them were included in the sale, however many of the marks were already licensed to other purchasers of parts of the old AO empire. SOLA purchased the full portfolio in the early 2000s but even then rights were restricted by the previous licences and the retention of the right to license and earn royalties by the owning company Coast Holdings Inc. The portfolio was managed by Debby Corriveau (Keating) then Jane Weinzierl under the guidance of Jeremy Bishop in the USA but the details are not fully understood by the present writer. To further complicate matters, the lawyers used by AO in the US, Lorusso and Loud (later Lorusso and Associates), were being embezzled by their office manager and she was tampering with the files to hide the fact that she was stealing. To resolve these problems all files were transferred to Phillips Ormonde in Australia but this was after the merger with Carl Zeiss.

There have been a number of major problems with fraudulent use of some AO trademarks. A small Indian optometrist tried to register American Optical and claims to have used the mark since 1976 and attempts to prevent this are still not resolved at the time of writing. A Chinese company managed to register AO and this has prevented registration of AO in China, a problem because American Optical cannot be registered as a trade mark because it is considered a geographical descriptor. A full discussion of the AO trade mark situation is given in Report R09/10

Research Directors

Matthew Cuthbertson

Matthew was Research Director in Australia at the time of the sale of SOLA to AEA. He was very keen to see the Intellectual property area run in a more systematic way and he wanted to understand the budget position in much more detail than was being provided to him. In 1997, he decided to appoint a staff member with formal patent attorney qualifications to be responsible for patents. However when Fauldings advertised a similar position at a salary of A$150,000 and failed to find a candidate he gave up the idea, and I transferred to a full-time position managing the IP portfolio of the company and a new full-time librarian was appointed instead.

From this point onwards, procedures and decision making were formalised. He created the impetus for senior research staff to meet monthly to discuss and review IP matters. He demanded more detailed budget statements and wanted to understand where all the money was being spent. A similar IP committee meeting bimonthly was set up in Petaluma, with David Ambler and Dave Bohling responsible for managing it. As the company’s budget tightened in the late nineties Matthew became very concerned that patent renewals would eventually use up the entire patent budget and this led to the development of better forecasting systems for calculating future patent and trade mark expenditure and regular reviews of the portfolio. The drive for better co-operation between the major research sites also led to setting up some joint patent meetings with the US research group using video conferencing. When Colin Perrott came back to Australia to live after leaving his job as Vice-President of R&D, Matthew organized Colin to act as my mentor to enable me to take over the technical responsibility for the patent portfolio as well as doing the IP administration. Matthew eventually became so interested in this field that on leaving SOLA he completed a patent attorney qualification and undertook training at Phillips Ormonde prior to finding a new job.

Simon Edwards

Simon was appointed Vice-President Research and Development in August 2001. He had joined SOLA in 1989 and was Director of Optical Lens Design from 1996 until 1998 and resigned to be Technical Director of Research Laboratories of Australia in 1999. He had expertise in intellectual property. Thus, he proceeded to take over patent policy matters. He started a number of commercialisation projects with lawyer Richard Pash at Minter Ellison. He organized several rounds of reviews of patents and trademarks as financial pressure mounted on the company.

Warwick Freeland

Warwick was appointed Vice-President Research and Development in November 2004 and the company merged with Carl Zeiss in April 2005. His influence on company IP in those few months was minimal.

Liaison with SOUSA, the rise and fall of IP in Petaluma

Prior to the acquisition of SOLA by AEA Investors, there had been no link between the IP work at Lonsdale and that done at Petaluma. The marketing groups managed their own trademarks and the research groups managed their own patents through the Pilkington Patents Group.

When Peter Coldrey was appointed Research Director in Petaluma and Matthew Cuthbertson became Research Director in Lonsdale they started to collaborate with each other on IP matters and both tried to increase the patent portfolio of the company. A Patent Committee was set up in Petaluma, with Bill Mayer, the Information Manager, responsible for its activities, mostly assessment of proposed patent applications and renewals. When Bill became ill the US responsibility passed to Dave Bohling and after his resignation it was held by Paul Coates. A number of joint meetings were held between the Australian and USA Patent committees using video conferencing, and one joint meeting was held in Lonsdale when many of the US committee members were in Australia for other meetings. Both sites organized training sessions for research staff and discussions on companywide patenting policies and the strength and weaknesses of the current portfolios were held. A number of standard confidentiality agreements were produced for general use on both sites and comprehensive listings of patents and trademarks were issued.

There were a number of curious things about the USA IP operation. The contact was originally Dave Spector who was quite casual about it and this encouraged inventors to deal with the USA patent attorneys themselves. Several USA inventors managed to file patent applications without the knowledge of their IP Manager or the Research Director. In the USA, inventors were paid a bonus when patents were filed and when they were granted and this seems to have been the reason for this behaviour. Two inventors even continued to negotiate with the patent attorneys and incur substantial costs after they left SOLA.

The research labs were remote from the attorneys who were based near San Francisco, and the inventors had not met their attorneys until training sessions were run at Petaluma – and then the attorneys visited using a private aeroplane.

Dave Bohling took on major responsibility for R&D contracts and became heavily involved in the contractual dispute with DSI over their experimental sputtering apparatus almost to the point where other matters were neglected.

When Neolens was taken over the sale included the acquisition of a number of patents which had been granted to the company. Instead of ensuring that the details were passed on to the IP staff, the staff most closely associated apparently decided to manage the patents themselves. A rather similar situation occurred with the takeover of Optical Electro-Forming, and in both cases there were problems with renewals and payments, and disputes over ownership of patent rights.

Much of the IP portfolio based in Petaluma was covering various aspects of the Matrix technology. The company took a financial interest in MODC, a Canadian company making high speed equipment for lens surfacing which it was hoped would solve the problems of making wafers without bumps. The company was not successful and it was liquidated. SOLA inherited the patent portfolio of the company but decided to let the liquidator sell the patents rather than take them over. A number were sold to the major suppliers of similar equipment, mostly Satis-Loh, and SOLA was left with a number of patents without value and they were promptly abandoned.