Intellectual Property (IP) is often the real life-blood behind young science and healthcare related start-ups, but it can be expensive to fund. With new technologies progressing at an astonishing rate, how is patent law keeping up?

Marks&Clerk are one of many companies involved in our IMAGINE IF! 2018 competition offering mentoring and advice to successful applicants. As part of our Science to Start-up events series, in the run up to IMAGINE IF!, we interviewed Matthew Jefferies, Patent Attorney at Marks & Clerk to get his expert advice for the start-up community.

Can you give us a quick overview of what you covered today and what you think the take-home message for the start-up community should be regarding intellectual property (IP)?

The talk today was on Intellectual Property (IP) which is the protection of the value in ideas, such as inventions and brands, rather than material property. The take-home message really is that the vast majority of the value in a start-up is in IP, in the ideas that are being generated, rather than in material property that might be owned. Whilst this effect is more prominent for start-ups, IP is also very valuable for more mature businesses. For instance, a recent report from the World Intellectual Property Office shows that IP accounts for around one-third of the global production value for a variety of manufacturing industries – a value of $5.9 trillion!

It’s important to make sure that the value is identified and effectively protected in order to make sure that that value is maximised. Maybe that’s protecting it via patents, via trademarks, by design rights. These are rights that can be obtained through filing applications at intellectual property offices. This often provides strong, valuable protection for the ideas; however, the application process can be costly. Some rights, such as copyright, that are generated automatically without the need for an official application. Identifying and making use of these can be valuable for companies that may not have the funds to pursue full registered protection. Having said this, registered rights, such as patents and trademarks, are generally much stronger and much more valuable that any potential unregistered equivalents.

Having said this, some concepts might not be inherently protectable, for instance, business methods or recipes. In cases such as these, having good records or keeping the ideas in-house (for instance, as a trade secret) can be very important.

In addition to protecting your own rights, it’s important to consider these ideas from an external view to see whether anyone else owns any rights that you might infringe. If so, this may pose barriers to the market and you may need to look into licensing or arranging a way to work around the rights.

Would you say that the start-up community, in your own experience, is very aware of protecting their IP moving forward?

I’d say yes. The vast majority of people who we speak to are aware that IP is important to their business. The main barrier for start-ups tends to be funding and working out when the most appropriate time is to seek protection.

It’s important to educate start-ups to know that it’s ok if aren’t in a position at this time to file any patents or trademarks, but that there are simple things that can be done that will allow them to defer that process so that they don’t lose out on the opportunity of protecting their ideas at a later date. For instance, patent protection can only be sought if the invention has been kept secret prior to the date of filing of the patent. That means that, if you wish to file for patent protection for an invention, it is essential that details relating to the invention are kept confidential. If discussions with external parties are necessary, then they should be under an obligation of confidence or subject to a non-disclosure agreement.

This is probably one of the most common issues we see with new start-ups, and the solution tends to be quite simple – keep the invention secret if you want to keep the option open for patent protection! Naturally, it is not always possible to do this, but the decision to disclose the invention should be an informed one, made in the full knowledge that it may affect the ability to effectively protect the idea in the future.

You specialise in advanced technologies. Considering that technologies are diversifying at a dizzying pace; do you think patent law is keeping up with these challenges? Does it cover these new types of technology that keep appearing every day?

Well, that’s one of the interesting things about being a patent attorney – that you are constantly exposed to the cutting edge of technology. Everyone that you’re speaking to is developing something that is inherently new because, by definition, it has to be new in order to get a patent for it. The patent office is actually very aware of where the state-of-the-art of technology is and that is basically where we are pushing into: this area of new ideas, new technology.

Is it difficult to assess the novelty of a product or idea considering how narrow and specific existing patents can be?

I think there are two parts to that. The first part is that as technology develops, it’s becoming a lot easier to work out where those gaps are because you have databases. You don’t have to go to a library any more to look things up by hand. You have databases to access this information and – I work a lot in machine learning and artificial intelligence (AI) – I’m sure that AI is going to assist this even more in order to help that job and speed that process up. On the flip side, I think that one of the things that inventors don’t always realise is that what they think is just a small change is actually something that is protectable. The majority of my job is filing incremental improvements. I haven’t come across a true game changer yet. There have been some really interesting ideas and some very valuable ideas, but something that is once in a generation is very rare. So, these things are all incremental improvements. Sometimes inventors, because they’re so immersed in their area of technology, don’t always realise how clever their idea is and it takes someone from the outside, from a business perspective, or from us, from a legal perspective, to pat them on the back and say, “look, you’ve done something really clever here!”

Do you think universities are using IP protection laws well enough to protect their interests or do you think there is a lot of room for improvement?

I think universities have caught on and are working to get better at IP. I don’t think that they are necessarily there yet, but some universities are better than others. I think that the universities in the US are probably ahead of the game, but UK is catching up.

Having said this, the university IP scene can be a great benefit to people because they are willing to fund filings for ideas when it would be likely be much harder and much more difficult to fund that externally. Funding for IP protection can be a major issue for start-ups working outside of universities, so having access to this within the university can be a great benefit.

The flip side is that universities aren’t going to provide funding without obtaining something in return. This is often in the form of the university owning the rights and licensing it back to the companies. My experience is that sometimes universities need relinquish some control and place more faith in the start-ups that they spin out. They can sometimes be a little too constrictive and hold on to those ideas and that IP too strongly to allow the businesses to flourish. Companies need to be given a little faith by the universities in order to go out there and progress from a business point of view. I’ve uncovered a few cases in my time where companies have failed, effectively because they haven’t been given the freedom to move on outside the university scene. I think universities are getting much better but, in this respect, maybe there’s a little way to go.

As an IP attorney what is the most exciting aspect of your job?

It’s always meeting the new inventors, meeting the new businesses. That’s always the exciting part of the day. To work with a small company that is really relying on your advice and you can really shape the prospects of it…that’s exciting! You get the wacky patents every now and again, but the best thing is the personal and the commercial aspect of it.

Do you have a message for the people that attended this workshop?

If there is one take-away, it’s to be informed. It’s important to identify the risks and the value in your ideas, and make sure that you have got a clear plan. There is a lot of information out there that is very easily accessible, but also don’t be afraid to seek advice. At Marks & Clerk we offer free consultations to new clients. We’re happy to speak to new business and quite a large part of our job is providing that initial advice to starting clients.