Patenting an invention is generally considered for granted: it is conducive to economic development and necessary to protect innovators from imitators. However, in recent years, voices argue that patent laws could impede innovation, discourage inventions from entering the marketplace and work against common good. We asked a patent expert (Christian Moser) and a multifaceted entrepreneur (Luc Henry) to give their opinion.

This article was first published in 2016 in the internal newsletter of the NCCR Chemical Biology. We have decided to republish this content on our public blog, so more people can have access to this content.

 

Interview of Christian Moser, scientist and patent expert

Christian Moser is a patent expert in life sciences and working at the IPI since 2014. Besides his activity as a professional patent researcher and examiner, he is involved in IPI’s efforts to promote IP awareness at universities and in the private industry. Christian Moser is a trained veterinarian with a PhD in molecular virology. After his education at the University of Bern and a postdoc at the University of Pennsylvania, he spent more than a decade in the Swiss vaccine industry in various scientific and management roles.

 

 

What are the main reasons for patenting an invention or not?

Patents protect the commercial exploitation of technical inventions by providing the owner a limited market exclusivity, in return for the public disclosure of the invention. The decision to apply for a patent should be based on a cost/benefit analysis, but the commercial success of the invention will also heavily depend on other factors. To justify the investment in a protection right, first of all the invention needs to meet the legal requirements for patentability, in particular novelty and inventive step. In addition, the invention must have a realistic market potential. Knowledge of the state-of-the-art related to the invention and of the potential markets is a prerequisite for the above-mentioned cost/benefit assessment. The importance of patents depends on the industry sector, the business model, and the risk-taking of the management. Trade secrets may be an alternative to patents but in contrast to patents, they provide no legal means to secure market exclusivity.

Does a patent right influence the product’s subsequent technological development?

A patent application defines the invention and the scope of protection, which is not expandable after filing. Substantial improvements developed later on require another patent application to obtain their protection. On the other hand, repeatedly delaying a patent application because of possible further improvements bears the risk that others may file the same invention first. A frequently used approach is to protect the basic invention with a first patent application, followed later on by additional, related patents covering novel aspects of the same invention. This strategy generates a patent portfolio to maximize protection of evolving technologies. However, each of the patent applications has to meet all requirements for patentability.

Does patentable mean necessarily profitable? Alternatively, does the absence of a patent hinder any return on investment?

Profitability implies commercial success, which is largely unrelated to patent protection. However, patents enable their owner to exploit a commercial success by providing market exclusivity for a limited time. Even before products reach the market, patent rights represent valuable assets, which can be licensed, traded or used to attract investors. For start-ups, patents often represent their only tangible assets and thus are a prerequisite for receiving venture capital and raising the interest of potential partners. Without patent protection, competitors can copy successful products instantly, thereby drastically reducing the return on investment for the original inventor and his business partners or forcing the originator company out of the market.

Do you see a moral responsibility of patent owners towards society, considering that most basic research starts with public funding?

A fair balance between the interests of society and inventors is the very intention of the patent system. The basic idea is to reward the patent owner with market exclusivity in exchange for the public disclosure of the invention. In addition, society benefits indirectly from the commercial success of patented inventions in the form of jobs, investments and taxes. If patents originate from research institutions, those institutions participate directly in the form of royalties. Increasing these direct benefits is desirable, but not generally applicable for all research disciplines. In addition, to identify patentable inventions in academia, researchers need patent awareness and access to professional support.

 

Interview of Luc Henry, scientist and multifaceted entrepreneur

Luc Henry is passionate about life science innovation, science communication and the impact of technologies on society. He received his MSc Chemistry degree from EPFL and subsequently earned his PhD in Chemical Biology from the University of Oxford, UK. Betweet 2012 and 2014, he conducted postdoctoral research in Cancer Immunology at the University of Lausanne, and then in Synthetic Biology as a Marie Curie fellow at the University of Ulm and at EPFL. While still being a researcher, he was also active as a science journalist, contributing to The Conversation, and involved in the Lift Life Science conference series. In 2014, he became managing editor of the quarterly magazine Technologist, an initiative from EuroTech Universities Alliance. In the same year, he co-founded Hackarium, an association promoting access to life science knowledge and infrastructure to non-professional scientists. In 2016, he became an advisor to Martin Vetterli, the president of the Swiss National Science Foundation, working on Open Science, and how unrestricted access to knowledge can create value in research and innovation. Luc moved to EPFL in a similar role in 2017, after Martin Vetterli was elected President of the institution. In 2020, Luc left EPFL to launch Limula, a startup company developing a laboratory device supporting the development and commercialization of cell and gene therapies.

 

What are the main reasons for patenting an invention or not?

The core value of patenting is that it provides everyone with a detailed description of an invention, while the author retains the economic potential for a given period of time, but also the control over how the technology will be used. If an invention is not patented, it still needs to be described to be useful to others. Only then can value be created through commercialization or further development. Choosing between different IP regimes involves pondering over costs, potential impact, and business strategy.

Does a patent right influence the product’s subsequent technological development?

It certainly does, and to a large extend, but it can be in many different ways. If a technology remains secret, it is unlikely there will be any subsequent development. Patents were designed to promote the development of better technologies based on the information available upon publication, but companies often use patents disputes to prevent competitors from getting more market share. Today, retaining a monopolistic position is often more important than bringing the best product to the users. In the absence of a patent, competition could bring costs down, promote quality and allows anyone to modify the initial technology and sell an upgraded product.

Does patentable mean necessarily profitable? Alternatively, does the absence of a patent hinder any return on investment?

A technology that has a useful application (a condition to obtain a patent) does not necessary sell. And a patent does cost a lot of money, over the whole of its validity period. Profitability depends on the capacity to absorb these costs on top of all other costs related to bringing a technology to the market. Many believe that a patent is the only way to protect IP and run a successful technology business, but there are several others. For example, trademarks can be very powerful commercial tools, and are much cheaper to implement. The absence of a patent is too often considered a commercial dead-end. Investors will only support an inventor if she or he owns a strong patent. In doing so, they ignore the potential positive impact of having competitors developing their own version of a product, therefore stretching the market further. Some, like Tesla, have understood this.

Do you see a moral responsibility of patent owners towards society, considering that most basic research starts with public funding?

Yes, I personally believe that there is a moral responsibility. In particular, research institutions should aim for the greatest impact, not revenue. But I have to admit that, in some cases, a patent can be the best way to ensure the invention has a positive impact on society. However, I think patents are too often used to hinder innovation and keep competitors at bay rather then bring new and better technologies to the market. Costless and straightforward alternative solutions that would allow open source technologies to thrive would be a very valuable addition to the current IP toolbox. In the case of copyright law for example, creative common licenses allow the author to choose under which conditions he wants to share her or his creation with anyone. What is lacking today is a similar framework for hardware and biotechnology.

 

Cover picture from the video “Your idea grows with us”, commissioned by the EPFL-TTO. Courtesy of Guillaume Champoux