Med-Tech Innovation editor Dave Gray caught up with Dr David Pearce, patent attorney and partner at Barker Brettell, to examine medical device patents – and how to get the best out of the investment.
DG: So, where do you start in planning for patenting?
DP: The most important first step is to make sure the invention is kept confidential, because any non-confidential disclosure can be used against you and stop you from getting a patent. The next most important thing to do is to put together a viable business plan for making money from the invention. Then go and find a patent attorney and discuss your invention with them.
DG: What makes a good IP strategy?
DP: Pragmatism is always a good way of approaching your IP strategy. Do not be too protective of your patent applications. If it looks like an application is not going to be commercially useful, don't fall prey to the sunk cost fallacy and hold on to it just because you have spent money getting it to that point. Instead, think at every stage where your money can be best spent. Weigh up the costs and benefits of each application, and be ruthless about letting go of those that are not paying their way or do not have strong commercial prospects. A strong, broadly defined, patent may be nice to have, but if there is no commercial product it covers the patent is fairly useless. A more narrowly defined patent that covers a specific product, however, can be much more valuable and worth protecting.
DG: Do you always need to patent?
DP: No. Sometimes it is simply not possible to patent something, such as a new business method. Even if something is patentable, there may sometimes be more value in being the first to get to market, particularly if there is a lot of confidential know-how involved in the product. Not patenting though can be risky, as others might be able to work out how your product is made and create their own version to undercut yours. Where an invention is, for example, a new way of making something, you should weigh up the benefits of getting a patent versus the downsides of having to make the process public when your application is published and the difficulties of enforcing the patent if it does get granted. Sometimes therefore, if it is possible to keep a manufacturing process secret, this can be the best way of protecting it.
DG: It’s an expensive thing to do – so how do you make sure you’re maximising on your investment?
DP: Figuring out which invention will make money is, of course, impossible. What is possible, however, is to maximise any potential benefit by staying realistic and flexible about your investment in IP. View your patenting strategy as a process that needs to be fed with new developments as well as having a clear out occasionally. Stay flexible with how far you reach with your patent applications, and don't ask for the earth. Patenting in every possible country may give you plenty of opportunities but will very rapidly consume your budget, so be realistic about where and how you are actually going to be making money from your inventions.
DG: What will a patent attorney actually do for you?
DP: At the outset, a patent attorney will prepare and file a patent application based on your invention that should give it the best prospect of being granted. If there is something in your invention that is patentable, your patent attorney should be able to identify it and write an application that will be able to capture it in a way that will make it harder for others to copy without infringing your patent. During the application process, your patent attorney will explain to you what the search and examination reports mean, and advise you on what you might be able to do to get over any objections from the patent examiner.
DG: Finally, what do you do if you’ve tried and failed to patent your product once?
DP: If at first you don't succeed, try and try again. Often the first attempt is part of a learning process, and a subsequent development that comes during developing a product turns out to be the invention that is the more commercially important one. Don't think of the patenting process as "fire and forget". Instead, it is important to think about all further developments as potentially adding to a portfolio that grows and refines over time. While some may be pruned or kept in a limited form, others may become more significant and be allowed to grow further. Trying, and sometimes failing, is all part of the process.
