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Progressing innovation outside the lab: a task list for researchers during lockdown – part three, physics and engineering innovation

Thought Leadership published by Appleyard Lees IP LLP, under Innovation / Incubation, Legal / IP, Manufacturing, Strategy

Lab-based scientists may not be able to access their workspace during lockdown, but there are things that can be done remotely to further an IP programme. In part three of our series, “Progressing innovation outside the lab”, we outline strategic tasks that physics- and engineering-focussed researchers and scientists can complete to further intellectual property during time away from the lab.

Lab-based scientists may not be able to access their workspace during lockdown, but there are things that can be done remotely to further an IP programme. In part three of our series, “Progressing innovation outside the lab”, we outline strategic tasks that physics- and engineering-focussed researchers and scientists can complete to further intellectual property during time away from the lab.

Appleyard Lees associate, patent attorney and engineering and physics specialist Louise Johnson works with businesses on patent matters ranging from printing and imaging techniques to display technology and medical devices.

Perspective from a physicist and patent attorney

Working from home during the disruption due to COVID-19 can be a challenge. How do you progress your research project when you cannot access your lab, let alone fly across the world for beam time on a synchrotron, take your product for testing in a wind tunnel, or trial your fusion reactor design? Colleagues may be more difficult to reach, customers may be unable to commit to orders, and a collaboration may be put on hold.

You might be using this time to analyse data, run simulations and plan future projects. But now is still a good time to maintain your IP strategy, or could also be a good time to consider establishing, tweaking or freshening up your IP strategy. Keeping on top of your IP not only can be done successfully from home, but also can protect your innovation to future-proof your commercial activity when things are back to normal, or the ‘new normal’. IP and its protection, in the fields of physics and engineering, is typically part of a long-term business strategy. This lockdown, and the general situation, does not change that.

Task one: identify inventionsSpend some time reviewing your ongoing research and development projects. Are there any developments that provide a commercial advantage? Protecting these innovations could give you a valuable edge over your competitors. Time spent reviewing results might also open up new avenues to take with your research when you can return to the laboratory.

Do you have ongoing projects that, although not yet finished, could be worth protecting? A product need not be completed before a patent application is filed, if the patent application contains a detailed description of how your product will function. Filing a patent application at an early stage may put you ahead in the race with competitors or prevent you from being left behind. Further related patent applications could be filed later to cover any further developments as the project is completed. It could be that initial lab work indicated a promising new set of results, that your data analysis has now revealed. Could a patent application be filed now, in perhaps broad, speculative form, and a more comprehensive filing made later, when lab work can be recommenced?

Are you writing up a paper for a journal or an abstract for a conference? Before this is submitted, think about whether the subject-matter might be patentable. Avoid missing out on patent protection by ensuring that a patent application is filed before your invention is disclosed to the public. This thinking has always applied, but perhaps now you have more time to write those physics papers, or submit that engineering article, and so care should be taken not to give away the IP that goes alongside those disclosures. Have you been spending your time away from the lab on modelling or simulations? It is good to bear in mind that simulation, models or design tools may also be patentable, in addition to the physical process or product. For example, a model for optimising conditions in an industrial process could be protected by a patent.

Task two: consider the scope of your existing patent portfolio

You could use this time away from the lab to review your existing portfolio of patents and patent applications. Do you have a granted patent that is reaching its expiry date? If you have made improvements to that product or process since the original patent application was filed, it may be advisable to seek protection for these improvements to cover new generations of the product or process.

Does your patent portfolio still continue to cover your commercial interests? If your research and development has changed direction since filing one or more patent applications, then now could be a good time to analyse whether your patent portfolio does cover this new direction of innovation. If not, consider whether a patent application still provides value to your business, for example in blocking competitors. You should also consider whether the new direction you have taken your innovation could be protectable by a patent. Reviewing the scope of protection of your existing patents and patent applications may help you identify whether you are now aware of work-arounds or alternative ways of solving the same problem. For example, are there alternative materials that you could use in your product, or alternative parameters you could use in your manufacturing process that provide the same or an improved effect? Filing patent applications for these alternatives or work-arounds could broaden your scope of protection.

Task three: progress existing patent applications

Do you have any outstanding actions on the prosecution of your existing patent applications? Now could be a good time to make some good progress with these patent applications. For example, taking time to review prior art cited in a search report could help to guide your decisions about future patent filings internationally.  Your knowledge in your specialist field of physics or engineering could provide beneficial insight to overcome patent office objections, which may reduce future costs in prosecuting a patent application.

Consider the impact of a particular patent application with the growth or success of your business. Is it now more pressing to obtain a granted patent for your physics or engineering invention sooner? Whilst in lockdown, we are seeing a shift to a more connected world and new technologies are emerging. If your innovation plays a part in that, then you may want to push ahead with your patent application. Many patent offices around the world provide means for accelerating the prosecution of a patent application, which could greatly cut down the time taken for a patent to reach the grant stage. Accelerating prosecution may be advantageous if you want to move forward with licensing, improve the value of your business to investors, or enforce your rights against infringer.

Alternatively, do you want to press pause on your patent applications? Extending the lifecycle of patent prosecution, effectively pressing pause on the process, may buy you valuable time to keep your patent applications alive, whilst normal scientific and product development are on hold. There are several options for pressing pause on your patent application, including requesting extensions of time for patent office deadlines.

Task four: investigate third parties’ IP and research your competitors

Are you aware of the products and processes for which your competitors in your field of engineering or physics are pursuing IP protection? A landscape search can identify the areas in which your competitors are filing patent applications and might assist you in recognising some empty space where there is a gap in the market or a problem to be solved. This might help you to direct your time and resources to new projects that give you a competitive advantage.

If the impact of COVID-19 has caused you to take your research in a new direction, then it may be advisable to consider freedom to operate. Having a patent does not necessarily mean you are free to use your invention, and it is important to consider whether your product or process may be in the scope of a third party’s patent. A freedom-to-operate search assesses these risks to help you decide how, or whether, to proceed.  If a third party does hold a patent that might prevent you from launching your product or process, then it may be helpful to use this time to investigate work-arounds, or licensing.

 

Our attorneys continue to offer practical guidance on the effects of COVID-related disruption on IP. Follow us on Twitter (@Appleyardlees) or LinkedIn, or visit appleyardlees.com for our latest insights released regularly.

Subscribe to The Greenshoots Podcast by Appleyard Lees for on-demand access to conversations focused on what matters most, right now, in patents, trade marks, IP litigation, IP strategy and more.

Please note that the above information is not intended to be comprehensive and should be discussed with a qualified trade mark attorney.

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