July 13, 2020
The Basics: Understanding Intellectual Property For Innovators in the Era of the Pandemic
contributor: Sylvia Mukasa, Tomoko Miyamoto
Throughout the era of COVID-19, we have seen numerous calls for ideas and innovations to solve the challenges that the pandemic has caused. The end game is to get as many ideas funded as possible to reduce the burden of the disease on humanity through innovation. Intellectual property (IP) rights are sometimes an obstacle, however. Innovators have complained about how their ideas were “stolen,” and some have reservations about submitting their brilliant ideas due to fear of the same.
Here we offer a basic explanation of IP to help innovators protect and comfortably share their work. We focus on the areas of IP that correspond to the kinds of innovations and inventions that might be developed to respond to the pandemic. We also cover IP for mobile applications and software, since these can be incorporated in hardware.
All granted patents are published by IP offices. Many are online, free-of-charge. In fact, these patent databases are a great source of technological information for researchers and engineers.
This is just a brief guide, since IP is a very wide topic and include various types. IP also applies differently based on the laws of each country. Some countries have established regional IP offices, such as the European Patent Office and the African Regional Intellectual Property Organization (ARIPO) . You will therefore have to read further for more detail in the resource links provided and then apply what is relevant to you bearing these factors in mind.
IP refers to creations of the mind, such as inventions, literary and artistic works, industrial designs and symbols, and names and images used in commerce, according to the World Intellectual Property Organisation (WIPO).
IP is divided into these categories:
- Industrial Property, which includes patents for inventions, trademarks, industrial designs and geographical indications.
- Copyright, which covers literary works (such as novels, poems and plays), films, music, artistic works (e.g. drawings, paintings, photographs and sculptures) and architectural design.
- Trade secrets, which are IP rights on confidential information which may be sold or licensed.
These IP enable people to earn recognition or financial benefit from what they create. Each category has its own attributes, requirements and costs.
What cannot be protected?
Usually, people do not expect that their business name, products, or product brands will be copied, but this actually happens frequently. And if it does happen, you generally cannot bring an enforcement action if your industrial property is unregistered. You therefore need to protect your industrial property early to avoid others obtaining protection on the same subject matter you invented or created.
What cannot be protected by patents:
- Prior Art. Where relevant prior art exists, you cannot patent your invention. Prior art is any evidence that your invention is already known. Prior art does not need to physically exist or be available commercially. It is enough that someone, somewhere, sometime previously has described or shown or made something that contains a use of technology that is very similar to your invention. If your invention is obvious from known prior art, you don’t get a patent either.Examples: If you have presented your idea at a scientific conference, or your invention at a pitch competition to investors or other funders, it becomes knowledge in the public domain. So, in principle, your idea or creation can be used as prior art even if it is your own work. You should, therefore, protect it before presenting it to the public domain.
- Traditional knowledge. Traditional knowledge is not protected by conventional intellectual property systems. This is knowledge that has ancient roots and is often informal and oral. By this, we mean the knowledge that is developed, sustained and passed on from generation to generation within a community, often forming part of its cultural or spiritual identity. India, for example, has compiled a searchable database of traditional medicine that can be used as evidence of prior art.
How do you discover whether or not something is patented? All granted patents, and in many countries patent applications, are published by IP offices. Today, many of them are published on the Internet free-of-charge. In fact, these patent databases are a great source of technological information for researchers and engineers. For example, you can search the technology contained in more than 89 million patent documents in the WIPO’s patent database, PATENTSCOPE.
All granted patents, and in many countries patent applications, are published by IP offices. Today, many of them are published on the Internet free-of-charge.
If your product is not a new, innovative product, there is no need to worry about a patent, but trademarking the brand may still be critical to compete and stand out. You can always use the “TM” mark on your goods and services, to put the public on notice of your intent to claim and enforce your trademark rights.
What to do to protect your innovations & ideas
We discussed different types of IP that protect different aspects of new creations. What does it mean concretely for your new ideas?
Let’s look at IP protection in three areas that are likely the most relevant to designers and inventors responding to the COVID-19 pandemic: (1) mobile applications and software; (2) medicines and vaccines; and (3) product design.
1. IP for Mobile Applications and Software
Software and applications are the brains of digital technology. They give instructions to hardware to perform useful functions. So, can we patent them?
The answer is that it depends on which element of your app you wish to protect. Certain technical features embedded in software may be able to be protected by patents: for example, an app that controls the temperature of air-conditioned rooms more efficiently. In general, patents protect not only products but also processes, including those processes carried out by software. You must be mindful however that your technical idea must meet all of the patentability requirements to obtain patent protection. Particularly, in relation to apps and software-related inventions, the patentability requirements vary from one country to another. For example, in some countries, apps and software regarding business methods are not patentable inventions. It is therefore important to seek advice from an IP expert.
Patent protection incurs costs, and it may take years to get a patent. Patent offices of many countries take the time to examine patent applications to check compliance with the patentability requirements. So, if your product has a very short life cycle, patent protection might not be worthwhile. The good news is that other types of IP protection may be available for your app.
One alternative is to use trade secret protection. As long as your software is kept secret, has commercial value because it is secret, and you take measures to keep it secret, it is protected against misappropriation from others. The shortcoming of trade secret protection is that if another person develops the same invention independently, you cannot stop the other person from using, making and selling the invention with your trade secret. You also cannot prevent others from reverse engineering your software.
As another possibility, the software that runs your app can be protected by copyright. Computer programs and other types of software are considered as literary works for copyright purposes. Therefore, the “literal expression” of computer programs, as written in either a programming language or a machine language, receive automatic protection without the need for registration.
Some countries have a special voluntary registration for software work. Note that copyright does not protect the “idea” behind your program – it only protects the program as it is expressed.
Focusing on the contents of apps, if you are interested in protecting original databases, music, videos and photographs contained in your app, you should consider copyright protection. Logos or signs indicating your company or the name of your app can be protected by trademarks. Graphical objects and layouts can be protected by industrial designs.
2. IP for medicines and vaccines
Patents and trade secrets are the main IP tools used in the pharmaceutical sector.
In general, the sector relies on patents to capture returns to often expensive and time-consuming research and development, clinical trials and marketing approval processes. Oftentimes, business strategies of research-based pharmaceutical companies are built on claiming an exclusive position in the market to recoup these investments. Consequently, they vigorously enforce their exclusive patent rights, preventing competitors from using, making or selling the patented medicines.
Importance of patents in the pharmaceutical sector also translates to the complexity of pharmaceutical patents. One pharmaceutical patent may claim protection of various aspects of the invention, such as compounds, including intermediaries, compositions, pharmaceutical formulation, medical use and a process of producing a composition. In any field of technology, it is important to draft a patent application properly before filing it. But in the pharmaceutical field it is especially important. Skillful drafting of patent applications assisted by an IP expert can be vital to obtain the scope of patent protection you deserve.
Particularly in experimental sciences like chemistry and biotechnology, know-how plays a significant role in producing products with sufficient quality at the commercial scale. The right products may provide a decisive competitive advantage. Sooner or later, your patent applications or patents are published and the world will learn about the pharmaceutical compound you invented, how it works and how it can be reproduced. Protecting know-how as trade secrets is a common strategy, both for multinational companies and small and medium enterprises alike.
As innovation in medical technologies becomes more complex, collaborative networks for innovation have been expanding. Members of those networks include private companies, public research institutions and universities. There are many Public-Private Partnerships in this field. In that setting, patents also become a tool for collaboration. As each patent defines a technical scope under protection of its owner, it facilitates clearer demarcation of the technologies that each collaborator brings into the project. It is also important to agree in advance on how the fruit of collaborative research would be shared among collaborators as part of these discussions.
Of course, patents and trade secrets are not the only IP relevant to pharmaceutical businesses. Trademarks protect names and signs of the company or the product to distinguish them in the market. The package insert of medicine may be protected by copyright. Industrial design protection may cover aesthetic designs of packages and pills.
Since the patent system (and IP in general) is based on recouping of investment from market demands, it is not an attractive tool for innovators if there is no market incentive. Examples include medicines for neglected diseases and orphan drugs (drugs that treat conditions that are so rare that the drug’s profitability is in doubt). In view of the fundamental importance of health, governments often set up other mechanisms to support innovation in the heath field, such as clinical data exclusivity, research subsidies, tax credits for research and development, and innovation prizes, which go beyond the theme of IP.
Since inventions that are not new cannot obtain patents, a known plant, or known knowledge that a certain plant has, for example, an antiseptic effect, cannot be covered by patent protection. However, innovations based on traditional medicinal knowledge may benefit from patent protection, to the extent the practice is allowed under the laws of the country concerned. New traditional medicine-based products, herbal preparations, extracts from herbal medicines and methods for preparing herbal formulas may be patentable. Remember, however, that to be patentable, an invention must not be obvious from the existing art. If leaves of plant X are known to have an antiseptic effect, simply mashing them, preparing paste and producing patches would probably be considered obvious and not patentable.
Special care may be taken if your invention derives from the traditional medicinal knowledge of others. In some countries, to prevent misappropriation of traditional knowledge by unauthorized third parties, custodians of traditional knowledge are granted an exclusive right over the subject matter of their knowledge. In other words, third parties need prior consent by traditional knowledge holders to use the traditional knowledge, including an agreement on the sharing of potential benefits gained through future commercialization.
Unless a pharmaceutically active compound can be synthesized, raw plant materials are starting materials for herbal medicines. Such materials, however, may be subject to access and benefit-sharing regulations under international agreements, in particular, the Convention on Biological Diversity. Researchers should seek assistance of colleagues from the legal department in order to avoid any accusation of illegal access to these materials.
Not all traditional medicinal knowledge is known to the public. Some may be kept secret within a family or a community. Such confidential traditional knowledge can be protected against misappropriation under trade secret protection, as long as it meets the criteria for such protection.
Compared with medicines, patents may play a less significant role in development of vaccines. To ensure the safety and efficacy of vaccines, a full regulatory approval process with pre-clinical and clinical trial data is always required, even for a “copy” of existing vaccines. This contributes to the high cost of vaccine development. At the same time, the fundamental vaccine production methods are generally conventional and in the public domain. Thus, not patentable. Nevertheless, improved formulations, new combinations, adjuvants, doses or delivery routes may be protected by patents. Know-how and expertise gained through research and development and production are often guarded as trade secrets to maintain a competitive edge over competitors.
Many innovative vaccines introduced during the last decades resulted from research carried out by public institutions. For public institutions, seeking patents is usually not about monopolizing production, but to have control over the technology in order to widely share the invention in a way that benefits the public at large.
3. IP for product design
The term “product design” has multiple meanings. To address IP issues, we first need to ask the question, What are “product designs?”
Sometimes, this word is used in the technology sense. That is, a design that is chosen due to its functionality. A specific curvy shape of the back of an ergonomic chair is primarily dictated by its functional purpose. You might have heard your colleague from the IP department saying “Our competitor got a patent on this. We need to design around!”. Your colleague is not suggesting that we should change the color of the product. It means we need to make certain technical modifications to our product in order to avoid patent infringement. So, functional aspects of product designs may be protected by patents.
In some other cases, the same word is used in the ornamental or aesthetic sense, such as an attractive and original outer appearance of the product that catches the eye. In IP, this is the domain of industrial designs. There is no shortage of examples where success or failure of the product was highly influenced by how it looks.
Somewhat confusing for non-IP experts, in some countries (such as the United States and China), industrial designs are also part of the patent family, which is called “design patents”. But patents and industrial designs (or utility patents and design patents) protect different aspects of a product. Following the well-publicized law case in the United States between Apple and Samsung, Apple was awarded $533 million for infringement of its design patents, but only $5.3 Million for its utility patent infringement. We can never say “it is just a design”.
When to use an IP attorneys’ services
In principle, copyright protection is obtained automatically without the need for registration – that means, you don’t need any lawyer to get a copyright on your original work. However, as a copyright holder, you probably want to benefit from your right. One possibility is to allow other companies to use your copyrighted work (for example, your software) against royalty payment, while you retain its ownership. Such agreements, which are called licensing agreements, are legal documents that need to be drafted very carefully. In another case, you might find someone who copied your software and sells it without your permission. If you want to stop it, you need to sue this person before a court. So, to enforce your right, you need assistance from a legal expert.
Some scientists believe they could easily prepare a patent application, because they know how to describe their research results in scientific publications. This is not the case.
To obtain industrial property rights (patents, industrial designs, trademarks etc.), registration with an IP office is a must. It is generally recommended to seek the assistance of IP experts (such as patent and trademark attorneys or patent and trademark agents) to register the industrial property rights. This is because preparation and filing of applications, as well as administrative procedures for IP registration, could be very complex.
Some scientists believe they could easily prepare a patent application, because they know how to describe their research results in scientific publications. This is not the case. We should be reminded that IP registration is a “legal” action that creates a “legal” right. Usually, patent experts need several years of practice to develop sufficient skills to draft patent applications. Similar to copyright, licensing industrial property is one way to enjoy the benefit of IP. Patent licensing, for example, can be just one part of a broader technology agreement or a collaborative research agreement. As the stakes get higher, all potential business risks should be taken into account to draft such agreements.
Inventors, researchers and technology companies usually benefit greatly from the expertise of a patent expert. At the same time, to obtain strong patent rights that really help their business to flourish, the patent expert needs the help of the inventors, designers and others to capture the essence of the invention and their business needs, and transform it to legal rights. In a way, IP is a baby of such collaborative work.
Although IP is a very specialized field, it is an area blended with law, technology and business. That is why it is relevant to all of us. And that is why it is so exciting.
IP is a vast field and only so much can be said in a short article. Please refer to the suggested further reading resources for a deeper understanding.
WIPO’s Resources for IP Research
- What is Intellectual Property
- Inventing the Future, An Introduction to Patents for Small and Medium-sized Enterprises
- IP and Mobile Applications (pdf)
- Traditional Knowledge and Intellectual Property – Background Brief
- Contact information and websites of National/Regional IP offices (https://www.wipo.int/directory/en/)
- Public-Private Partnerships at WIPO (https://www.wipo.int/cooperation/en/)
- Global IP Databases (https://www.wipo.int/reference/en/#databases)
- WIPO Patent Drafting Manual
About the Authors
Sylvia Mukasa is a Contributing Editor at Engineering for Change and CEO and Founder of GlobalX Investments Ltd, an IT & Telecoms Consulting firm in Nairobi, Kenya. Sylvia also attended the WIPO/ARIPO Patent Drafting Course in Zimbabwe in 2019.
Tomoko Miyamoto is a Head of the Patent Law Section, Patent Law Division, in the World Intellectual Property Organization (WIPO).
Disclaimer: The statements and views expressed in this article are solely those of the authors and do not represent any official position of WIPO.