Materials Informatics (MI) has the potential to revolutionise how Advanced Material discovery is performed. With the right models, data sets and experimental know-how, a huge volume of useful information and innovation can be generated in a relatively short time.
But all this information, all this IP, might not be the blessing it seems.
Too much of a good thing
One problem of course is how we approach IP strategy in our own programmes which utilise MI. A significant further concern, as ever, though, is the impact of other people’s IP.
Where many companies are generating vast volumes of potentially protectable IP in a technical area, there is a risk that a patent ‘thicket’ develops, greatly impacting the landscape and potentially blocking suitable IP protection and/or commercialisation in that area.
Even in there is not significant IP filing, publication of results may mean that later innovations cannot be protected adequately.
For example, consider a project which identifies 100 possible compounds of interest. If each of them is published, for example as part of a speculative or ‘demonstration’ document with no experimental verification, it may be very difficult to later get a patent covering one of those compounds, even if it is found to be remarkably useful.
If the list of 100 is diverse enough, it might successfully block a range of potential patent applications. From a defensive standpoint, this might be a very favourable outcome. Where we are trying to protect innovations, though, such mass-publications can cause significant difficulties.
Complexity breeds uncertainty
Such difficulty is compounded by the long timescale inherent in the patent process in many countries. It might be many years between publication of a patent application and its eventual grant, causing years of uncertainty for parties wishing to commercialise something which might end up covered by the eventual granted patent.
Again, this might be a good thing if it is our own patent application causing the uncertainty. However, having such patent applications looming over freedom to operate (FTO) in a certain space may make for significant costs in analysis and difficult decisions on risk. MI solutions, of course, rarely think of IP.
FTO impact
The effect on the FTO landscape of broad patent publications, listing large numbers of possible compounds, is significant. Companies may face numerous patent applications or patents which do or could encompass a material they have developed, while at the same time making it difficult or even impossible to protect the innovation themselves.
To have safety and/or certainty in a crowded field, significant time must be spent on analysis of FTO, and potentially agreements must be reached with multiple IP holders. This makes entry into such a field challenging for small companies. Arguably that might slow the rate of innovation in that field, as fewer people work to develop it.
Such considerations may mean that obtaining protection for newly (especially, MI-assisted) developed compounds or materials per se is not possible.
That does not mean the end of a potential IP strategy, though.
A strategy for all seasons
When looking to protect innovation, we might consider what options we have for protecting our own MI methodologies and algorithms, which (presumably) are not published even though certain materials they suggest have been.
We might conduct brief patent searches for each of the front-runner materials before filing our own patent application, and focus on those which are most free from prior art.
There is also, depending on the nature of prior art found, the potential for protecting not the material alone but, for example, its particular usage, formulation, or real-world context. In certain jurisdictions each of these may be protectable even in the face of a publication of the material itself.
When navigating a crowded landscape, we can consider FTO searching to identify problematic areas from which to steer clear. Looking jurisdictionally can also greatly limit the depth of the landscape: for example, if we are not doing business in China at the moment then China-only patents and patent applications can be essentially ignored from an FTO standpoint.
As well as reaching a commercial licensing agreement with the owner of a troublesome patent, there is also often the option of challenging a patent or application, with the aim of getting it revoked or limited. While costly, if it removes a significant roadblock in FTO then it can be very worthwhile. This may not be viable if the crowding is too great, as so many patents would have to be knocked out to give FTO, but can be useful where only a small window of opportunity is needed.
The mass of information that can be provided by MI solutions is an incredible tool in innovation. However, we need to be aware that if we’re doing it, so (probably) are our competitors. Understanding how best to navigate the IP position in such situations is vital for success.
