Robert Donald, innovation and licensing officer at Medovate explains how the company navigates the IP landscape having secured 40 patents in four years.
Talk us through Medovate’s process of filing a patent?
We identify key points of the invention, what makes it new and inventive over the current state of play and prior art. During this initial review we look over the prior art and general IP landscape using various patent databases. These documents are reviewed internally and considered against the technology we’re looking to protect. This helps shape how we consider drafting the application to account for any prior art, as to successfully see a patent through to grant there is the requirement for it to be novel and gives an overview of the commercial landscape and our freedom to operate in the market.
We work closely with our external patent firm, who manage the drafting and filing process on our behalf. Throughout the drafting process we review the drafted material to ensure that we fully capture the idea and potential other iterations to broaden the scope, working closely with the inventors and engineering team. Once we have a robust patent specification this would be typically filed at the UK Intellectual Property Office as a priority application.
What is Medovate’s IP strategy?
Our filings and claims are directed to the technology as a whole, potential disposable and component elements, and consider therapeutic applications and, in the US, methods of treatment. From that core filing, and as the technology evolves through development, we typically look at the improvements being made and consider further patent filings thereby widening the scope of our protection away from the core patent.
We look to file as early as possible for that core IP to cover risk during development. Any further patent filings are when we feel comfortable that we have significant material to support them.
How do you choose which territories to apply for protection in?
We consider several factors when deciding on territories; first are our key markets over the lifetime of the patent, where our first positions in the market will be, and weighing the value of downstream territories.
We consider the competition, identifying where key players are, their core markets and manufacturing bases. We consider this as a defensive strategy but providing the potential to align with a partner downstream and increase the opportunity value.
With all our patents we go through the normal prosecution route from priority application to Patent Cooperation Treaty on month 12 which allows us to simultaneously seek protection in multiple territories.
What is the current IP climate like?
The pandemic has slightly impacted the timelines for prosecution through to grant; there is a backlog in many patent offices worldwide meaning that although the initial formalities process of priority through to PCT to national phase is set, the examination phase during the nationals can be slightly drawn out, though I understand that the UK IPO have recently cleared theirs.
Costs overall are pretty stable, the only addition is the consideration for further overseas defensive patents to account for the competition in the Far East which can push up costs significantly with general legal, formality and translation fees.
There are some incentives that make the process worthwhile commercially for any organisation to pursue patent protection; in the UK we have the Patent Box which allows companies to apply for a lower rate of corporation tax from any profits arising from patented inventions.
How has having IP experience in-house benefited the company?
MD Stuart Thomson and I have extensive background in the management and commercialisation of IP. IP is at the core of our business; giving us control and understanding of our portfolio, opportunities to expand this, prosecution decisions, the IP landscape that we’re moving in, and strategic commercial opportunities.
It’s important for the IP strategy to fit in with the work of all other departments within the company. Our main consideration is during the development phase of any project and working with our engineers to ensure that any refinements fall within the patent specification, and that improvements are captured for potential further filings.
Finally, what advice would you give someone at the start of their IP journey?
Find a good patent attorney with expertise in your area, potentially even the market (who is pragmatic with advice) to ensure that you take the right path when drafting and through the prosecution.
Early-stage companies should put in place a process that identifies new innovations and have a protection strategy. This could be through an innovation disclosure form for the development team.
Regular structured meetings with the steering group have been vital to review the company IP progress, new filings, and prosecution of patents, potentially bringing in the patent attorney also, to have a constructive plan of action.
Finally monitor and review the patent landscape for competition, there are several good databases that are free to use, including espace.net and lens.org.
