Andy Bentham, patent attorney with J A Kemp in Cambridge, discusses the challenging but rewarding relationship between UK universities and patents and the effect on this of the UK’s recent decision to leave the EU.
The global patent system was not conceived with modern universities in mind. This need not, however, stop the academic sector working successfully with patents as long as some ground rules are understood.
In an increasingly competitive academic environment, grant funding, research assessments and careers can all hinge on publications. But publication in a traditional journal or online, conference presentations, poster display, and other forms of public dissemination are damned by the patent system as disclosures that give rise to prior art, after which an invention can no longer be patented in most countries even though the disclosure is the inventor’s own.
There are unfortunately no UK or European plans to introduce the sort of grace period provided by US law, whereby it is possible to file a year after a disclosure by the inventors and discount that disclosure as prior art. It is however usually possible to work with this constraint.
Many academics have either learned the hard way not to disclose too soon or been educated by outreach from technology transfer offices (TTOs) or the patent profession. More are therefore now aware of the issues and consult TTOs or patent attorneys ahead of time.
Sometimes researchers are also incentivised to patent by the same funding frameworks that promote publication so the university’s academic and commercial goals are more aligned.
Most university patenting is still reactive rather than strategic, in that patent filing tends to be considered only when a disclosure is near and universities are often forced to file before optimal experimental support is available, but this is what it is. Businesses collaborating with universities have come to terms with these constraints.
Another worry is that, once the initial flush of enthusiasm leading to a filing has passed, it is harder for universities to develop inventions beyond proof of concept.
Academic labs have other priorities and may lack resource or receive little academic credit for experimentation that is more development than research. It can therefore be difficult to bolster university-originating inventions after patent filing to a level that convinces patent offices of enablement.
This has, however, also unlocked somewhat because some universities can themselves now provide early-stage funding and more diverse commercialisation models are available – not just traditional licensing but spin-outs, SME collaborations, contract research, translational research funding and so forth.
Universities can and do take some projects a long way now, especially via spin-outs that collaborate closely with the parent institution. This is beginning to level the patent playing field. Patent costs are a perennial issue but TTOs can contain patent drafting costs by capturing invention disclosures and triaging the projects taken on. Considerable flexibility on costs is also available from the patent profession at this stage.
Longer-term expense will always be greater as filings fan out worldwide but can be managed to an extent by using the Patent Cooperation Treaty (PCT) to defer the decision on how widely to file and taking that decision pragmatically when the time comes. Even the possibility of patent protection in a handful of major markets is often worth a commercial partner buying into.
So, although things are not perfect, in general UK universities are reasonably well served by the patent system – not because it is ideal for them but because they have evolved to cope with it.
How does the big issue of the moment, Brexit, affect this? Before Article 50 is even invoked, already there are reports of UK labs missing out on collaborations and EU funding and concerns for the UK’s diverse scientific workforce going forward.
Everyone hopes that some combination of government, scientific community and industry action will mitigate any ill effects and new opportunities will fill the gap. But for all that the UK’s patent system is now also deeply European, it will be less affected.
The European Patent Convention (EPC), under which most patents covering the UK are granted, is not an EU legal instrument. Rather, it is an inter-governmental agreement, unaffected by EU membership, which has always included non-EU countries such as Switzerland. Patent filing and examination will therefore continue as before.
More of a question hangs over the forthcoming unitary patent system intended to centralise patent litigation and create a single unitary patent right for some 25 participating EU countries, as distinct from the bundle of individual national rights that make up a current European patent.
This was close to becoming reality but now there is a hitch in that the current agreement requires UK ratification. At best there will therefore now be a delay while the UK reconsiders or does nothing pending EU exit, and at worst the project may fail if the UK is not part of it.
For universities, this would be a lost opportunity because an EU-wide unitary patent would require little costly translation at the grant stage and only a single renewal fee each year afterwards, reducing the cost of broad coverage around Europe to a level where universities could much more often afford it.
However, if the unitary patent does eventually come into being without UK involvement, most of the benefit is still reaped because all users including UK organisations will be able to obtain unitary patents and validate separately in the UK for little extra cost.
So universities have less at stake in their role as patent applicants than in other ways. Nothing changes everything.