IP strategy is best considered at the start of research and development (R&D). The first step is choosing the IP approach to take during product development. Novagraaf’s Mark Suddaby explains the options.

While every organisation and industry sector will have differing IP policies and R&D priorities, they each share the same challenges when it comes to considering and capturing IP. The question is: at what point should they start?

Typically, businesses consider IP after R&D activities have yielded a conceptual technical solution. Likewise, academics, while excellent early searchers of published papers, rarely search patent literature.

However, with much R&D activity focused on crowded technical areas, companies and academics are beginning to recognise the need to incorporate IP strategy into their R&D approach. Managed appropriately, IP can help drive and focus R&D efforts, and mitigate the risk of investing in the development of technical innovations that may unnecessarily overlap with existing prior art.

Patent landscaping
Rather than searching the existing prior art for a specific solution in development, patent landscaping outlines the existing technical field. This can highlight those technical areas which are the focus of major development, and the quieter ‘white space’ which may inform future R&D strategies.

Early patent landscaping differs from traditional searches to assess patentability since at this stage a technical solution may not exist: this is the case where landscaping occurs during scoping of an R&D programme.

One key benefit is the early identification of prior solutions. In its report ‘Why researchers should care about patents’, the European Commission estimates up to 30% of R&D activity is wasted since the technical solution developed already existed. In the UK, this equates to £4.8bn of R&D spending.

Looking at the patent landscape early also enables strategic decision-making concerning product development. The results may indicate a ‘white space’ prospect; for example, by identifying quieter areas in a technical field. Armed with this information, the company can make an informed decision on the resources to allocate to a project.

In addition, where prior technical disclosures are found, the analysis can mark out the available technical field. Crowded parts of the landscape are unlikely to yield broad patent rights, while identifying unoccupied parts of the technical landscape (the ‘white space’) can help direct R&D efforts towards areas that are more likely to yield broader patent protection.

Where an existing solution is found, options include:

  • freely using the existing solution where there are no active IP rights in the countries of interest;
  • licensing-in the existing solution; and/or
  • acquiring the IP to strengthen the business’ IP portfolio.

Such approaches can save R&D expenditure and may reduce product development time. That saved R&D expenditure could be redirected to other development activities.

Alternatively, guided by the landscape, R&D efforts can be strategically targeted to develop an independent, patentable solution. Two common reasons to do this are to avoid licensing and to take advantage of the tax relief available under the Patent Box legislation that exists in the UK and other countries.

In addition to identifying whether an existing solution exists, undertaking an landscape search at this early stage provides other benefits, including:

  • finding alternative technologies, synergistic technologies and opportunities to collaborate, cross-license, or form an IP pool;
  • using the search results as a catalyst for new ideas in an R&D team; and
  • identifying ‘hot’ areas of research where early patent filing may be critical.

A later patentability search may still be prudent where R&D has taken significant time or where the technical field is ‘hot’. One option here is to request the patent office conduct a search when filing a patent application.

Patent searching
Patent landscaping is an important tool for companies during the early phases of product development life cycle; however, in some industry fields, it may be beneficial to undertake such technical analysis later in an R&D programme. This can be achieved by incorporating IP into clear checkpoints along the R&D cycle.

The nature of a company’s R&D programme will influence the appropriate number of checkpoints. Common triggers include proof-of-concept, functioning prototype and final technical solution. Each of these checkpoints corresponds to increased certainty in the technical solution, thereby enabling a progressively more focused approach to patent searching. On the other hand, searching earlier provides greater opportunity to respond to search results.

Developing a search strategy
Where patent landscaping has not already been conducted, patentability searching will enable companies to examine the state-of-the-art in the relevant technical field. Undertaking such searches at set checkpoints during the development cycle will provide insight into the likelihood of patent protection and its probable scope.

Freedom-to-operate searching supports such analysis by identifying whether existing patents present hurdles to an organisation’s ability to commercialise its R&D output. Both searches provide useful inputs to the likely commercial outcomes of the research and product development programme.

Where IP has already been considered at an earlier stage of the R&D programme (e.g. through landscaping), these searches can be used as a means to compare and build on those earlier results. Among other things, they will identify whether previous analysis is still relevant or whether additional searches will be necessary to cover changes in R&D direction, or to assess freedom to operate where patentability has been searched.

By putting in place IP checkpoints during the R&D life cycle, companies can maximise the opportunities for both IP and product development, and adjust their approach in line with each R&D programme’s scale and criticality.

In large R&D programmes, for example, there may be several patentability searches during product development.

Identifying the best approach
The approach to use depends on the company’s market and situation:

  • Where a technology company is new, or where new technical fields are the subject of R&D, patent landscaping offers significant benefits. In comparison, it may offer little benefit where no known solution exists. This is most likely to be the case in fundamental research and life sciences;
  • Likewise, a technical field may be well understood, in which case a search-first IP approach may offer reduced value. This is most applicable to organisations with a long pedigree in their technical field and where competitor IP and technical disclosures are actively monitored;
  • Where the technical field is a ‘hot’ area for research and patent filings, the development of a technical solution may be time-critical. This is especially true where an organisation intends to seek patent protection, however limited, for strategic reasons such as defensive accumulation or cross-licensing. Even in this situation, an early landscape search concurrent with research may help direct later research to increase the likelihood of a patentable technical solution being developed; and
  • Finally, where landscaping is not undertaken for strategic or other reasons, patentability searching will provide important insight to the likely scope of protection available.