«Patent information is worth a lot of money»
«Many SMEs are highly innovative but they lack a systematic IP strategy,» says Alban Fischer, Head of the Patent Division at the Swiss Federal Institute of Intellectual Property (IPI). In an interview, Mr Fischer speaks about inventors, protecting innovation and the value of patent data.
How well do the Swiss understand patenting, Mr Fischer?
In sectors such as the pharmaceutical industry, but also increasingly in the higher education innovation and start-up scene, the protection of intellectual property is dealt with very professionally.
The key word is professional – what about those who don’t deal with intellectual property (IP) on a daily basis?
I think it’s clear to most people that effective IP rights systems are highly important for an innovative, export-oriented economy. Yet, the legal, scientific and, above all, economic aspects of the IP rights system have to be explained and justified time and time again. This is why we do a lot of educational work – with our assisted patent searches for the general public, with our publications, with our courses, and by being present at events.
Essentially, a patent is a deal between the state and an inventor – legal protection in exchange for publication. Why is disclosure so important?
The patent system works like a set of scales; on the one side, you have the inventor’s interest in protecting their IP; on the other, you have society’s demand for a state of the art that is as transparent as possible.
What’s the reason for this demand?
Patent information is a prerequisite for all systematic research and development work as it prevents resources being poured into inventing the same product or process multiple times.
The IPI has a Contact Centre for specific questions, which can be reached at 031 377 77 77. Who can use this service?
Anyone who is innovative or creative. Our experts will answer any questions concerning patents, trade marks, designs and copyright.
How often do people ask if unknowingly using others’ intellectual property is a punishable offence?
I don’t know off the top of my head how often, but it happens.
And what’s the answer to that question?
Ignorance is no defence. With regard to IP-related matters, penalties are never imposed ex officio. Infringement of third-party intellectual property rights can only be prosecuted upon request. The rights owner must therefore first become aware of the infringement and then initiate proceedings against it.
The IPI employs more than 50 patent experts in the fields of physics and electronics, chemistry, engineering, and life sciences. What services do they provide for interested members of the public?
Firstly, they are responsible for examining patent applications. Secondly, they are able to extract data from a practically arbitrary number of patent specifications and present it in a format suitable for customers. Two concepts play a central role here – freedom to operate (FTO) and verifying novelty. By carrying out a novelty search, an inventor can avoid investing in an invention that has already been made somewhere else in the world. By having a freedom to operate search carried out, he or she can make sure that they’re not infringing the rights of third parties.
The IPI also supports companies in strategic questions. What can it offer a manager?
The magic word is metadata. Patent information is much more than the disclosure of an invention or an innovative process. It also contains information on the owner of the patent, its origin, the inventor and the technical field of the invention. By not only looking at a single patent specification, but also, for example, the patent portfolio of a company or an entire country, we can obtain much more information.
An experienced patent searcher can find out the other areas in which the owner of a patent is conducting research. Or, they can search for details of the partnerships that the owner has entered into. And because patents are only valid in certain countries and regions, it is usually fairly obvious which markets the patent owner is operating in. Moreover, they can gain general information on partners and competitors. We’re talking about classic business intelligence here.
How up-to-date is the information you provide?
Given that we also have access to published filing details, our information is very up-to-date. At the moment, for example, we are seeing that the new 5G wireless network has triggered a huge increase in research activity. Our engineering experts have noted that the number of patents relating to the Internet of Things and autonomous mobility are soaring here in Europe, but also in Asia and the USA.
Some patent attorneys and information brokers offer patent searches, too. How does the IPI set itself apart from them?
Private providers work with the same basic information as the IPI does. On the often cross-border market for commercial searches, we are ordinary competitors operating under the brand name ip-search.
However, unlike private providers, the IPI collects 50 million Swiss francs in annual fees each year...
In terms of how fee revenue is used, legislators have made a clear distinction between our commercial services and our information mandate. Our commercial services must be cost covering, meaning that no cross-subsidisation is allowed (which, by the way, makes us one of the most expensive providers on the market). Income from fees is reserved solely for sovereign activities for Switzerland as location for innovation. We use this money to provide free information and to share our IP know-how with authorities, higher education institutions and other non-profit organisations.
What does this mean in concrete terms?
Our collaboration with the National Centre of Competence in Research (NCCR) Chemical Biology’s research project is a good example of the support we offer. The NCCR runs boot camps where young researchers participate in two full-day intensive courses to find out if their research results are suitable for commercialisation. One of our life sciences experts attends each boot camp and is on hand to analyse which aspects of a technical work are really novel. Or, they can show how to translate a scientific discovery into a patent specification.
The Assisted Patent Search is a service aimed directly at inventors. What’s it about?
We launched the Assisted Patent Search 14 years ago because we saw that there were no commercial services providing basic information. Here at the IPI, any inventor, researcher, start-up or SME representative can ask questions about the patent system and comb through the relevant patent literature with one of our experts.
How many assisted searches did the IPI carry out during the reporting year?
A good 750.
Who are typical clients?
Many work at the interface between higher education and entrepreneurship in what is known as the ‘innovation ecosystem’, which brings us back to the NCCR Chemical Biology research project. At one of their boot camps, ETH engineer Daniel Steitz from Aargau gained initial insight into the quality of his patent portfolio. He later founded a start-up and spent a day at the IPI in Bern doing an assisted search.
What was he interested in?
He and his team work in the area of metal-organic frameworks (MOF), a new class of materials which experts say has huge potential. With the patent landscape analysis search, my colleague Christian Moser showed Mr Steitz who his potential competitors are.
Novomof (the name of his company) was one of the finalists for the prestigious 2017 Swiss Technology Award (STA). Does that ring a bell?
Yes, it does. I’m a member of the jury for the STA. However, I’m sure that Novomof would have made it to the final without my vote. In my opinion, the fact that my colleagues and I have been involved with a high-tech start-up in various stages of its development shows that our fee-funded services are well known and valued within the innovation ecosystem. However, we are less visible to SMEs.
Why do you think that is?
Many SMEs are highly innovative but they don’t have a systematic and documented IP strategy. Also, their day-to-day operations are very much focused on the upstream and downstream companies in the value-added chain. Getting a birds-eye view of the state of the art therefore often gets neglected, not least because of its dynamic character.
Is it not enough for an SME to ask the IPI or a patent attorney for advice if they have a specific IP-related problem?
To give an example, someone who only deals with the subject of IP rights when they first receive a warning letter from a competitor has generally already invested quite a lot. And they have potentially lost all of this money.
What would you advise in such a situation?
You can never rule out a mutually agreeable solution in the form of a licence agreement with the owner of the patent in question. However, a licence comes with a price tag. This is why, as a rule, the earlier in the innovation process the legal aspects of IP protection are considered, the cheaper it will work out in the end. Patent information is worth a lot of money. That message needs to be heard more clearly.
What are your plans with regard to this?
Organisations such as the innovation agency Innosuisse, regional and cantonal economic development agencies, trade associations, organisers of enterprise awards and also associations of inventors, work with innovative SMEs on a daily basis. Our aim therefore is to strengthen our collaboration with these intermediaries.