Florian Bazant-Hegemark, Senior Associate at Marks and Clerk, intellectual property service providers…
To file or not to file?
Filing patents is key to locking in the value of innovative new products, not to mention the R&D investment that often underpins them. So why is it that so many inventors and entrepreneurs fail to file?
In a recent report from the UK Intellectual Property Office (UKIPO) 206 of more than 600 companies surveyed indicated that they had a valuable innovation that was not patented. This means that these companies cannot use patent protection to protect their most valuable innovation against copying by competitors. This could lead to a proliferation of copycat products and also means that they cannot license their innovation for third party use – an often lucrative business model for those developing new technologies.
This is a particular concern for those in the healthcare sector where new technology is driving rapid innovation on the one hand, while also providing new means of counterfeiting such as 3D printing on the other. So, why are so many innovators not protecting their innovation, and failing to insure against unscrupulous rivals who’d seek to exploit their innovation?
Interestingly, although cost does play a role in some cases, it is not the most frequently given reason for not pursuing intellectual property protection. Indeed, we see similar levels of filing going on at big companies and smaller companies, despite spending power disparity.
The most frequent reason given for not patenting a valuable innovation is belief that the innovation, despite being new, is not ineligible for patent protection.
This is true in certain cases, such as patents directed to certain excluded types of innovation, such as software or generic mathematical methods. The patent office also refuses patents for surgical and therapeutic treatment methods for humans or animals, to ensure that such methods can be carried out without fear of patent infringement.
Many of these exclusions apply to the healthcare sector: for instance, is it possible to patent an app that calculates the likelihood of a treatment success by comparing a sample to a database? The answer is that this depends on the circumstances, and how the invention is explained to the patent office. Quite often, it is possible to protect an app with a patent, even though the app in question is a software product and even though the app is based on a mathematical algorithm.
Furthermore, the rules on what types of innovations can be patented are not cast in stone. It is not uncommon for patent offices to regularly update their patent examination rules based on a shift in technical reality. The UK Intellectual Property office updates its examination guidelines as often as three times a year. And only in October 2018 the European Patent Office has updated its patent examination guidelines on inventions that use artificial intelligence.
The take-home message is to be positive about the possibility of securing IP. The survey clearly reveals existing misconceptions about what can and can’t be patented, when the reality is more nuanced. The risk of potentially missing out on a patent for your innovation means it’s always worth discussing your innovation with an expert.