As part of our Thought Leaders series, Mewburn Ellis Partner Sean Jauss explores how bundling IP rights potentially provides a much more valuable and attractive asset when commercialising a bioinformatics product.
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A single piece of string has a certain tensile strength. When the limit of that strength is reached, the string will snap. However, if you take a number of strings and bundle them together into a rope you can create a whole that is stronger than the strength held in the individual parts.
The same can be true for IP rights residing in a bioinformatics product – in an intangible sort of way.
There are a number of individual IP rights (strings) that can exist in a bioinformatics software product. Yet many rights holders focus particularly on registered rights, specifically patents that protect an inventive concept and trade marks that protect the brand applied to the product. These are the most commonly understood rights and generally the most valued. But by focusing on these rights only, you may miss other (possibly equally valuable) assets.
For example, copyright is an unregistered right which comes into existence when an ‘original work’ is created by the author. In the field of bioinformatics, this work is most likely the source code. Originality is not a qualitative or an aesthetic test, and the burden of proof is not high.
Another example of course, is the algorithm which lies at the heart of the computer program. Usually, an algorithm is not protectable as a copyright work. However, it may be protected as a trade secret. The EU recently introduced a directive that harmonises trade secret law across Member States and protects against the misappropriation or unauthorised disclosure of trade secrets.
Then there are database rights, which come in two forms. The first is a form of copyright in the structure of the database itself. The second – which applies to Europe, including the UK after Brexit – is a sui generis right that protects the extraction and reutilisation of the database content. Both of these are exclusionary rights that do not have to be registered.
Set of strings
So, if we again consider a bioinformatics product, we can now see how different aspects of it are protected by this available bundle of IP rights:
- A patent may cover the inventive concept described by the software.
- A brand will protect a product’s name.
- A trade secret may protect an algorithm, which is itself then described in a software product, which may also be secret but is also protectable as a literary work in copyright.
- Where the software interrogates and/or populates a database, the database can be protected as a form of copyright and possibly also as a sui generis
When it comes to commercialising the bioinformatics product or seeking an investment in your business, a bundle, therefore, provides a potentially much more valuable and attractive asset.
The failure of one part of the bundle will not negate the efficacy of the others. Thus the licensee or investor will benefit from each of these overlapping rights. Finally, enforcement when defending or bringing a claim will be much stronger and resilient if you are able to rely on a series of different overlapping IP rights.
Building the case for your bundle
If your bundle is to be effective, there are certain considerations to bear in mind. The trick, especially with unregistered rights, is to be able to show that the rights exist.
When it comes to copyright, it is essential that you organise your information correctly, in particular identifying who created the works, whether they were employees, and if were not, ensuring you have the necessary contracts that vest the IP rights with the company. Also remember that copyright only protects against copying of the work or part of it. It does not protect the idea behind the work, only how that idea is expressed.
While trade secrets are not registered and no active steps need to be taken by the rights holder, you do have to line up your supporting evidence. Critically, the information in question must be kept confidential. Further, you must take reasonable steps to keep it confidential, which includes having appropriate IT security systems in place, using non-disclosure agreements, managing the flow of information within and outside of the business, and other steps that demonstrate that the integrity of that secret is valued.
For the database right to rise, it must be possible to demonstrate that an effort has been made to verify and present the data beyond the steps taken during its creation, and that there has been a substantial investment in doing so.
“If the scope of the IP bundle is properly understood and described, this greatly empowers the rights holder”
So, for any given bioinformatics product, it is clear that many IP ‘strings’ can exist. If each is properly understood and documented they can together be bundled into an IP ‘rope’. If the scope of the bundle is properly understood and described, this greatly empowers the rights holder, improving commercial value and enforceability.
In contrast, if the scope and relevance of these rights are not understood properly, assets may be undervalued, imperfectly protected or left without the grounds on which they can be properly enforced.
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