Photonics IP protected?

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Dr Andrew Fearnside, a senior associate at law firm Appleyard Lees, sets out the arguments for protecting intellectual property when commercialising photonics innovations, and what to consider when seeking IP protection

Why have intellectual property? This is a perfectly reasonable question concerning the commercialisation of photonic innovations, and in particular innovations arising from collaborations between universities and industrial partners. So what are the uses, roles and limitations of intellectual property (IP) in university-industry collaborations?

The general rule of law is that knowledge, innovations, and ideas become free to use once they are voluntarily made available to the public. IP is the exception to this rule. It’s an intangible property that permits control of the exploitation of ideas, and can be bought, sold, mortgaged, licensed or used as collateral for a loan just like physical property, such as a house or land.

There are five main types of IP: patents for inventions, for new or improved products or processes; those for designs, for the look of a product; trademarks, for brand identity; copyright, for written material or drawings; and confidential information, for trade secrets such as technical knowhow.

Here, we’ll concentrate on patents since they are the most relevant to R&D situations, and are the most effective at protecting innovations. Other types of IP are often acquired later on at the product development stage of commercialisation after the invention has been established. Nevertheless, the following issues concerning patents, where relevant, apply to other types of IP.

What patents can do, and what they can’t do

A valid patent gives its owner the right to prevent others from using the invention for commercial purposes. So, the buying, selling or licensing of a patent is, in effect, the trading in this right. However, while a patent gives its owner a right to prevent use of the invention, it does not give him the right to use the invention himself – a patent right is not a right to use an invention! This sounds contradictory, or at least unfair, but consider the following example.

Consider Mr Smith. He has invented a new bio-photonic device called an optical tweezer. It uses two laser beams to move and control the position of isolated cells. It is new, it is inventive and he is granted a UK patent for it.

Now consider Mr Jones. Mr Jones has been very pleased with the optical tweezer he bought from Mr Smith, but finds that it is not all that great at controlling a cell’s position in three dimensions. He sets his mind to this problem, and devises a solution: the three-beam optical tweezer.

A third beam outside the plane of the other two beams constrains out-of-plane cell movement. This innovation is novel, it is inventive and Mr Jones is granted a UK patent for it.

Question: Can Mr Jones commercialise his three-beam optical tweezer in the UK now he has a UK patent for it? Answer: No! This is because Mr Smith’s patent claims: ‘An optical tweezer using two laser beams to control the position of an isolated cell’.

The patent claim covers any optical tweezer having at least two laser beams. Any optical tweezer falling into the scope of that wording infringes Mr Smith’s patent. We can see straightaway that Mr Jones’ three-beam optical tweezer uses two laser beams – incidentally, together with a third beam – to control cell position. The commercial use of Mr Jones’ innovation would infringe Mr Smith’s UK patent.

In spite of this limitation, Mr Jones’ patent is still of commercial use. It enables him to:

  • Prevent competitors from exploiting his improved optical tweezer;
  • Seek a license from Mr Smith from a relatively stronger position (cross-license), given that the three-laser tweezer is clearly better than the two-laser tweezer;
  • License his innovation to others (e.g. manufacturers, strategic partners with market access); and
  • Sell his idea in whole or in part (e.g. to a business partner).

All of these are important in helping the commercialisation of Mr Jones’ innovation, but none would be possible without IP.

Using and managing IP within a university-industry collaboration

A technology transfer relationship between industrial and university partners should aim to benefit fully from IP arising from research, and the partner most able to pursue commercial exploitation (e.g. the industry partner) must have sufficient access to that IP to enable full and successful exploitation. Managing the technical outcomes from a research partnership is important and could include: registered protection (patents), confidentiality or secrecy agreements, and ‘defensive’ public disclosure.

Secrecy can help keep developments out of the reach of competitors, but could conflict with the needs of the university partner; they need to publish research to establish status and influence funding reviews. Of course, deliberate public disclosure of new outcomes might hinder competitors from patenting similar innovations, or may help in enabling a rapid take-up of technology, but the risk is that neither the university nor the industry partner benefit much from that take-up. Indeed, investors may be very alarmed at that strategy. Registered protection, such as patents, allows controlled disclosure later at much less risk.

Who is to own new IP arising from the collaborative research? The right to a patent depends ultimately on who the inventors are. Only after the true inventors have been identified can the true owners of the patent rights be found; only they have the right to trade (sell, licence etc.) the patent rights. Thought should be given to this early-on, and ideally a clear written policy should be set out to avoid confusion and misunderstanding later.

If the invention is an improvement of existing patented technology (e.g. Mr Smith in relation to Mr Jones), then access to that background IP must be put in place at an early stage. This applies to background IP owned by others (e.g. Mr Smith), and also to background IP owned by the university or the industry partner.

IP awareness tips for all concerned

A basic practical awareness of IP among staff involved in generating and exploiting it will always help. It is alarmingly easy for an organisation to lose IP by not taking basic precautions in its management. Think about, and get professional advice, on things like:

  • The process of identifying and protecting IP;
  • An understanding of patentability and the patenting process;
  • The importance of ensuring a clear chain of IP ownership;
  • The importance of confidentiality and what constitutes a damaging disclosure; and
  • Understanding the organisation’s policy on IP disclosure, ownership, protection and exploitation.

The most critical point is an understanding of what is and what isn’t a damaging disclosure of information about an innovation. In most circumstances, making any information about an invention available to the public in any way before a patent application has been filed can seriously jeopardise that patent application. 

IP for photonics

Photonics is a global market with transnational implementation. It has many large organisations competing within it, and competition is likely to be strong. Some photonic technologies are implemented outside of national borders (e.g. transoceanic submarine fibre-optical repeaters). These factors suggest certain strategies when generating a patent portfolio.

A common business model is to mirror the territorial patent filing strategy of an established target company in the technology sector in question, with the aim of offering IP licencing, or even selling a spin-off company to them. This, of course, makes the offering more attractive to the target company since it matches their existing territorial IP requirements.

Always remember that a patent is a commercial tool. Think about what aspects of your technology offer the strongest commercial prospects and gear your IP to protecting that. For example, an innovation may be a complex new photonic apparatus that includes a cheap, disposable new photonic component. The biggest commercial market may be in the replacement supply of the disposable component and not in the supply of the complex apparatus per se (i.e. just as printer ink cartridges are in relation to printers). It would be wise to build strong IP around the disposable new photonic component. This could often be the case with new photonic materials and simple photonic components containing them.

Your IP should be there to help protect you in territories where your main market exists, where your main competitors have their manufacturing base and where you have strategic partners. Even though competitors may in principle be free to exploit your technology in regions where you have no registered IP, that may be of less concern if the IP you do have prevents them from even manufacturing the technology at all in their manufacturing base or home country.