The concepts that underpin the protection of ideas and inventions are not new; such
laws have been around for several hundred years and are discussed under the broad
heading of intellectual property (IP). IP is easily misunderstood, but at the same
time most scientists encounter it at some point in their career, as it is a necessary
feature in the commercialization of research.
The term intellectual property includes such concepts and rights as copyright, trademarks,
industrial design rights, and patents. It is important to remember that IP is a tool
to help your endeavours, and not a goal in itself. Having IP for its own sake is pointless.
IP can be crucial in commercializing research and running a successful science-based
business, but having a patent and having a successful patented product are two very
different things.
Above all, IP can only work for you if you understand what it is, why you want it,
and what you are going to do with it. These ten simple rules are intended to provide
an overview of these issues; however, we must start with a warning. Laws relating
to IP change all the time, they are complex, sometimes rather obscure, and are very
different from country to country. For example, research surrounding methods of treatment
by surgery and therapy and diagnostic methods are patentable in the United States,
but specifically excluded from patentability in Europe [1]. However, these boundaries
seem to be shifting in both the US and Europe. In short, we are dealing with a complex
and changing subject and restrict ourselves here to the guiding principles.
Rule 1: Get Professional Help
Although the process of obtaining IP looks deceptively simple, like many things the
devil is in the detail. Let's consider patents as an example. The practicalities of
patent application are straightforward; you simply file documents with the relevant
body indicating that a patent is sought, and provide the identity of the person applying
and a description of the “invention” for which a patent is sought. The patent office
will then write back to you with an application number.
However, there is no guarantee that a patent application will become a granted patent.
Indeed, at the application stage they do not even check that your description describes
an invention at all. Even if you draft a description in as much detail as you would
for an academic research paper and file it yourself, the prospect that it will be
granted and enforceable is very low. There is skill and technique, even a language,
that patent attorneys and patent agents have that allows them to describe and define
inventions in the way a patent office requires. As an example, in everyday parlance,
the terms “comprise” and “consist” could be considered to mean the same, whereas they
have very distinct meanings in a patent application.
The dangers are possibly even greater with trademarks and registered designs (also
known as “design patents”)—these are generally granted with very little examination
and patent offices are often even less inclined to suggest using a patent/trademark
attorney for such “simpler” rights; however, the lack of examination means the validity
of such a right is uncertain and they become open to challenge.
The costs of redrafting a self-filed application are invariably higher than the costs
for drafting an application from scratch, and if there has been any disclosure it
will probably not be possible to re-draft. So, in summary, if you want your IP to
be valuable, you should seek professional advice at an early stage.
Rule 2: Know Your (Intellectual Property) Rights
IP rights come in various guises, and each is a defensive right to pursue legal action
in the event that a third party infringes. In very basic terms:
Patents protect inventions—broadly, things that are new and not obvious—and the way
they work. Sometimes this is expressed as “everything under the sun made by man”;
however, there are numerous local exceptions from patentability—we touched on the
complexities of methods of treatment above—but there are similar issues in relation
to genes, computer programs, and business methods, for example.
Registered designs protect the appearance of products (not the function, which is
protected by patents).
Trademarks protect brands (e.g., trade names and logos).
Copyright protects the expression of ideas—i.e., the words you choose to use to describe
your idea—not an idea itself.
Most businesses do not need the trinity of patents, trademarks, and designs; in fact,
trademarks are probably the only IP most companies have or need, however for a few
companies the full house is required: for example, consider the Apple® iPad®: two
registered trademarks, a registered design for its shape, and of course patents for
the way it interacts with the user. Not to mention copyright covering the code and
the packaging. A huge battle in the courts around the world is currently taking place
over these rights that may well effect changes in the law. The Wall Street Journal
calls the recent Apple/Samsung case “the patent trial of the century” [2].
Rule 3: Think about Why You Want IP (i.e., What You Will Actually Do with It)
Any money spent on IP is capital that cannot be spent on production, marketing, etc.,
so think carefully about why you are investing in protecting your IP. There are many
good reasons: to stop people from copying you; to add value to your company if you
want to sell it; to sell or license to a third party; to hold it in your armoury if
you suspect you are going to be sued and want to countersue (for example, Google has
spent a substantial amount of money buying patents recently [3]); even to reduce your
tax bill (in certain countries profits attributed to patents can be taxed at a lower
rate [3], [4]).
However, in general, IP is a right to prevent other people from doing something; owning
IP does not necessarily give you the right to do anything yourself.
One school of thought says that IP is only valuable if you are willing to enforce
or defend it, and the cost of such an action can be prohibitive. Indeed, the business
model of “patent trolls” is to purchase patents, sometimes from those who cannot afford
to enforce them, not to use the invention, but just to enforce against infringing
companies. On the other hand, the term “defensive IP” has been used to describe IP
obtained, not to stop other people from competing, but to stop a competitor from patenting
something that you may wish to use in the future. Thus a patent application may be
filed, and published but allowed to lapse, with no intention of ever enforcing it,
simply because the step of publication will mean that should a competitor apply to
patent the same or a similar invention, the patent office will locate your application
and it will anticipate the competitor's application.
Note also that while this article is titled “Ten Simple Rules to Protect Your IP”,
it is important not to be too introspective and to consider other people's IP. For
example, successful strategies can be built around taking exclusive licenses—licenses
that exclude even the IP owner from using the IP. One tactic to improve your competitive
position can be to take an exclusive license under a patent, then either expand your
range to include the patented product, or continue only to sell your own product,
but use the exclusive license to prevent manufacture of the other by anybody else.
Rule 4: If You Don't Protect the IP, Your Innovation Is Less Likely to Happen
Maybe you are not an entrepreneur yourself, but have an idea that you would like to
see it exploited—it could, after all, make the world a better place. You can publish
it—then anyone who wishes can use it freely. But the big question here is, will they?
Many inventors think that by publishing their ideas freely they are more likely to
have them exploited; however, the converse is often true (for example, in health care,
where lack of patent protection is often cited as a major reason for not following
up an idea (T. Roberts, former president of the Chartered Institute of Patent Attorneys
[UK]).
The reason is economic: most innovations require investment, and investors look for
a return on their money. However, ideas that are released without any IP protection
will often immediately attract competitors who can perhaps undercut the inventor (for
example, with economies of scale). This decreases the likelihood of investment in
the development of an invention (which is often more crucial than the invention itself)
and increases the need for investment in marketing, etc. to obtain a competitive edge.
So what we have to consider here is that—even if you don't want to profit personally
from the innovation—it may still pay to protect it so that it will see the light of
day through other investors. Remember, IP can be licensed and what happens to the
resulting income is up to the IP's owner. And this is a point where it gets complex
for scientists and others who invent as part of their employment. We will cover this
in more detail in Rule 10.
Rule 5: What's in a Name?
You have a great idea but it's not patentable, or you have applied for patent protection
but are worried that it may not cover everything, and of course the protection will
expire after 20 years [5]. This is where trademarks come in to fill the gap in your
protection. Unlike patents and designs, a trademark or brand can be protected with
a registration at any time (unless someone else has got there before you)—you do not
need to have kept your name a secret, and once registered the right will only expire
if you stop using it or fail to renew it (generally every 10 years). So, you can protect
your invention with a patent and sell it under your brand, which is also protected.
Once the patent protection expires, customers are used to buying your product with
reference to your brand, and will hopefully continue to do so even though competitors
may start offering rival products. Just make sure your brand is something memorable
and unique to you.
Viagra is just one example of a trademark so closely associated with the product (sildenafil)
that a good proportion of the market should remain in the hands of the trademark owner
well after the patent has expired (in this instance, if priced competitively). You
do need to be careful here in selecting the name you are protecting: descriptive brands
are easy to market but hard to protect because descriptive terms do not fulfil the
requirement of “distinct character”. And you can be too successful: many people now
use the trademark Hoover to mean a generic vacuum cleaner, Thermos for a vacuum flask
to keep food hot, or Tannoy for a public address system. It can be very expensive
in terms of lawyers fees to police such trademarks and keep protecting these names
and prevent them becoming simply part of the language and hence devalued.
Rule 6: Be Realistic about What You Can, and Cannot, Protect
IP rights are, generally speaking, national rights provided by individual governments
to regulate activity in that particular country. In some cases there are bilateral
and multilateral agreements (for example, most of the world has signed up to the Berne
Agreement, which accords the same level of copyright protection to foreign nationals
of other Berne states that is provided to nationals of the state concerned [6]).
However, for most rights, it is a national issue. In an ideal world, each incremental
improvement would be patented in each national jurisdiction (there are approximately
200 countries in the world), along with the name you trade under, and every brand
would be the subject of a trademark, as would any color associated with your company
and any sound you use, your products and their packaging would be the subject of registered
designs, and your patent attorneys would be very wealthy!
In the real world it is essential to be realistic. A patenting regime covering more
than the US, Europe, and a handful of other countries is a rare sight outside the
realms of very large companies (such as big pharma), and even many big companies restrict
themselves to key markets.
Rule 7: It's Big Business and Controversial
The world of IP is a big one. It's controversial, as it has a huge impact on international
relations and trade. It's also controversial for political reasons, as many people
feel that aggressive protection stifles the utility of products that have the potential
to do good in the emerging world (again, for example, big pharma). The World Intellectual
Property Organization (WIPO) is the United Nations agency dedicated to this area [7],
and it's worth considering its overarching aims, which include reducing the knowledge
gap between developed and developing countries, and ensuring that the IP system continues
to effectively serve its fundamental purpose of encouraging creativity and innovation
in all countries.
Of course, many question the value to society of IP, or at least the expansion of
IP, in promoting creativity and innovation. The Public Library of Science describes
itself as a driving force of the open-access movement, and accordingly, unlike many
copyrighted works, this article may be copied without seeking permission, provided
that the original authors and source are cited.
It can be hard, for example, to defend the extension of copyright from 50 years after
an author's death to 70 years on the grounds that the extra 20 years of protection
is in any way likely to encourage creativity. Whatever your thoughts on IP, it is
worth bearing in mind that others may disagree.
As a scientist and innovator you may be driven by many ideals: to make the world a
better place, perhaps, or to buy yourself a yacht—we are all different. But like it
or not, if you want to commercialize your ideas you cannot avoid the issue of IP,
and we go back to Rule 1 here—get professional advice. Even if your aim is totally
philanthropic you may still need to invest to protect your innovation, perversely
because this is what will give it the biggest chance of actually succeeding. Simply
make sure you tell your patent attorney what your ultimate aims are.
Rule 8: Keep Your Idea Secret until You Have Filed a Patent Application
Little upsets a patent attorney more than hearing “I have a great idea—it's selling
really well” or “I've shown it to a few companies and they seem very interested”.
There is an old maxim that says a secret shared is not a secret anymore. While a secret
shared under a non-disclosure agreement (NDA)—documents most people have heard about
but probably never read—ought to stay secret, discussing an invention under the umbrella
of confidentiality is no substitute for being able to freely discuss or publish an
idea that is protected by a patent application.
Obviously, once your idea is published by a journal it is too late to file a patent
application—your invention has been made available to the public. However, earlier
in the publication cycle the situation is different. If you send a paper to a journal
for submission, it will (excluding open review) be treated as a confidential disclosure
to the publisher and the reviewers. Notwithstanding, the best advice is still to file
a patent application before submitting a paper, either to avoid a potential “abusive
disclosure” or hold up the publication of the paper.
In summary, novelty is key to patentability and your own disclosures count against
you, so remember to file a patent application before telling anybody who is not bound
by confidence.
Rule 9: Trade Secrets
Regarding patents, the economic reasoning behind the system is an exchange between
you and the public. The government allows you a monopoly, and your side of the bargain
is to disclose fully your invention so that once your 20 years of protection is up,
it can be freely exploited for the good of society. A patent can provide you with
a 20-year government approved monopoly. However, some ideas cannot be patented and
indeed, some innovators don't want to patent their ideas. All is not lost here, however,
as we fall back on an older idea and one much beloved of thriller writers: the trade
secret.
If you really can keep a secret, your monopoly on an idea or product may never end.
But once the genie's out of the bottle, like a champagne cork, you won't get it back
in and you are unlikely to extract sufficient damages from whoever breaches confidentiality.
Thus, if you have an idea that cannot be reverse engineered, you do not have to enter
into the patent bargain. Trade secrets are free—just prevent the secret being disclosed.
But bear in mind that that this can be very difficult indeed, but not impossible.
Famous successful examples include the recipe for Coca-Cola and the formulation of
the alcoholic beverage Chartreuse, which is only known by two monks.
Rule 10: Make Sure the IP Is Owned in a Way That Allows Development
Notice that we don't suggest “make sure you own the IP of your invention”. If you
discover something whilst working as an employee (e.g., of a company or an academic
establishment), there will certainly be something in your contract about this. Generally,
the employer will have first call on the invention, but may have clauses that will
return rights to the individual if it is not exploited within a certain time—in some
countries this is enshrined in law [8].
Ownership of IP is a minefield, and can be particularly difficult in an academic setting
where numerous complicating features are involved. Universities, as employers, are
likely to have a right to their employees' inventions; funding bodies may make their
own claim; inventorship is not like authorship—the people whose names are on an academic
paper are unlikely all to be inventors; and in cross-border collaborations, national
laws on ownership may well be in competition with each other. One complicating factor
that is often encountered is joint ownership: if you can, avoid joint ownership; instead,
set up a company to own the IP and license it to partners if necessary (otherwise
you face differing national rules on what joint owners can do with and without each
other's permission).
If it is necessary to share IP, work out at the beginning who owns what, what rights
each party has and importantly who will have the right to future inventions. In fact
this is a common theme in several of our Ten Simple Rules: as soon as money rears
it ugly head, strife follows, so it's as well to plan for dispute resolution right
from the beginning.
In summary, first, you can never act too early, but it's very easy to act too late.
Like many topics that involve the law, IP is a mind-numbingly complex topic and more
so, perhaps, as it's not national, but international, so get the very best professional
advice you can. If you are working as an employee, speak to your company at the earliest
stage; they have a vested interest in helping get it right. Second, because significant
sums of money are involved, plan for future discord. Finally, persevere: your invention
can make the world a better place.