Intellectual Property: boosting opportunities in viral fields

Mewburn Ellis' Niles Beadman explores how an effective IP strategy can help innovative businesses exploit their virality

If traditional publicity is hard to control, then virality is even harder. Virality describes a rapid and wide circulation of content on the internet. How and why a piece of news, an image or a video goes viral is multifaceted – but it can happen quickly, unexpectedly and transiently.

If the old adage that “there is no such thing as bad publicity” is to apply to virality, then innovative businesses need to be prepared at all times to exploit theirs, or that of others in their sectors. Intellectual property (IP) is an important tool for this, and having the right IP in the right places and at the right times can be important to maximise viral opportunities when they arise.

Although “viral” content is often associated with videos of cats playing the keyboard or babies biting fingers, virality in the world of science and innovation is increasingly common. A recent example of viral interest is the video of the supposed room-temperature super conductor “LK-99” levitating over a magnet, which gained tens of millions of views across social media platforms. Testament to viral unpredictability, the video had been available for a number of months, but only went viral when pre-prints about LK-99 were published in July 2023.

The group behind LK-99 had filed a number of patent applications long before their publications and viral video. However, the strategy they adopt for these patent applications and other IP assets will be important for them, along with any other businesses or research institutions which see their work go viral.

Virality moves fast. Although patent offices are searching and examining cases faster than ever, the initial publication of patents only occurs after 18 months, and the average time to grant remains about three to five years from filing before the European Patent Office (EPO). Reducing the time to patent publication and grant can be valuable, as any remedies from infringement can only be backdated to publication, and the patent can typically only be enforced once granted.

Acceleration of patent procedure is possible through various mechanisms. Before the EPO, a ‘PACE’ request can be used to accelerate an application through search and examination. In the UK, acceleration can be achieved using the green channel for green inventions, or at the UKIPO’s discretion if the applicant faces infringement or the need to raise investment capital. The evidence needed to trigger this acceleration varies, but virality may lead to a heightened risk of infringement and increased investment interest. This would appear to support an applicant’s case for acceleration.

For patent applications being prosecuted globally, the patent prosecution highway (PPH) initiative can also significantly accelerate prosecution where one patent office has found a case to be allowable – as this office’s analysis can be used by other collaborating offices.

Trade marks filed with the EUIPO can’t be accelerated in the same way, however, the EUIPO does promise that applicants using their Fast Track system – a system by which a harmonised list of goods and services are chosen from – will have their marks published in faster than normal marks. On the other hand, UK trade mark applications filed at the UKIPO are quite speedily examined as standard, in around two weeks. If examination does not reveal any issues, then publication should occur shortly afterwards.

IP rights are typically jurisdictional, and pursuing global protection can also be key for viral inventions, where awareness and attention is typically worldwide. For patents, international (PCT) applications are an effective way to keep the door to global protection open, and provides applicants the flexibility to select countries of interest two and a half years after the first filing.

Similarly, for trade marks, international registrations can be filed via the Madrid Protocol system. A single application is filed under the Madrid system, under which a bundle of countries are designated. The system allows the owner to apply for protection in up to 130 countries (as at 2023) either with the original application or at any subsequent point following their original trade mark registration.

With widespread interest in an institution’s work, comes an increased chance of “offensive” actions against their IP. Before patent grant, this can take the form of observations, filed for the Examiner reviewing the case to consider. After grant this might be a centralised opposition before the EPO or revocation action before the Unitary Patent Court (UPC). Trade marks must also stand the test of third-party opposition. Both in the EU and UK third-party owners regularly oppose new trade mark applications, which can lead to partial or total refusal of the application, depending upon the extent of the opposition.

Planning for offensive activity should start when drafting the patent application itself – ensuring that the patent is drafted clearly and stress-tested. A robust set of fall-back positions and a detailed, well exemplified, description is one of the best defences against attack. Analogously, it’s crucial for brand owners to thoroughly research their trade marks before filing, to form a cohesive picture of the risks associated with their new registration. This includes the infringement risk relating to the use of the new trade mark, and not just the risk of an opposition being filed against an application.

Filing strategies can also be important. For European patents, it is common to use divisional patent applications to pursue protection for more defensible scopes of protection, and to ensure a case is left pending even until after the opposition period has passed on other cases in the family. More recently, strategy around the UPC has also become important to consider. For existing patents, there’s a choice to be made regarding whether to keep your cases ‘opted-in’, which allows you access to centralised infringement actions, or ‘opted-out’ which protects your cases from centralised revocation in the participating UPC states. For pending patent applications at the time of allowance, there is a further available route to patent protection which is to make use of the Unitary patent system. This allows for cost-effective wide-spread coverage in Europe, but this is accompanied with the risk of centralised revocation before the UPC without the possibility of opt-out. For applicants working in viral technology sectors, this decision can be decisive to how they enforce and protect their IP interests in Europe.

Offensive measures should also be kept in mind for those working in viral fields, even if their own work hasn’t achieved virality. Growing interest in technical areas can bring competitor companies working in the same area to the fore, and assessing your freedom to operate in view of a competitor's IP can be a valuable exercise to mitigate risk. Conducting a freedom to operate analysis allows companies to identify problematic IP, allowing for early action to be taken to manage infringement risk, such as filing observations, oppositions or even approaching the applicants to negotiate an agreement.

IP agreements, such as licences, are important tools to facilitate rapid expansion of a business area, which might be demanded for viral inventions. Moving first, and moving fast, can be key where viral publicity is concerned, to capitalise on the large but often transient attention a sector attracts. Licensing of a company’s own IP assets to local partners can be a quick way to expand into new territories. On the flip side, as a local operator, seeking licences from IP owners is also an option where a segment is rapidly growing in response to viral attention.

Brand recognition and protection are also central to cross-border expansion. Companies working in dynamic areas should keep in mind the importance of protecting the brand of the company itself as well as the product they sell. Keeping an eye on market developments to prevent counterfeiting and arranging to watch for new trade mark applications that may infringe on brand owners' rights help solidify a brand identity and can help the brand – eventually – transcend borders

Unfortunately, not all intercompany interactions are amenable, and not all those jumping on the viral bandwagon have carried out the necessary freedom to operate checks. As an IP owner, it’s imperative to be aware of the legal tools available to stop potentially infringing activity quickly and effectively.

Preliminary measures are key here, as they can be sought and, if allowed, implemented rapidly ahead of a full trial. In the UK for example, interim injunctions can be sought for potential trade mark, copyright, patent and design infringement, where the application is thought to be "just and convenient".

More far-reaching preliminary measures are available in some EU countries, such as France, Germany and the Netherlands, and these measures have recently become widely available via the UPC. For granted European patents in the jurisdiction of the UPC, it’s possible to request interim injunctions, and orders to preserve evidence, inspect premises and freeze assets across all the UPC countries in which the European patent is in force. It’s yet to be seen how readily these are applied, but based on current practice in Germany and the Netherlands, it is expected that they will be granted relatively freely. These preliminary measures can be extremely powerful, and applied without prior notice – in extreme cases preventing companies from carrying out their business by freezing their finances and inventory.

Companies working in a viral sector in Europe should be alive to the risk associated with these preliminary measures, and can take preventative action by filing “protective letters” at the UPC. This gives the potential infringer the opportunity to mount a defence to any preliminary measures sought against them. In a fast-moving, viral subject area, being aware of relevant IP rights and taking proactive measures such as the filing of protective letters can be key to protecting your business interests.

The fact something has gone viral could also be important for remedies during a full trial. In the UK for example, whether and when an infringer knows they are infringing can impact the calculation of damages. The date when an invention goes viral could be argued to represent the date an infringer first finds out about an invention, and it may be difficult for them to argue that they were unaware of a viral technology in their field.

Broader awareness of patent applications in your technology sector can also provide indirect advantages and insights about the latest innovations. Patents are often filed and published in advance of literature papers, so can offer early insight into the applicant’s work. Also, in contrast to literature publications, which focus primarily on the best performing examples and data, patents often include information about variants that work less well – to illustrate the development journey to their star embodiment. This provides valuable, and rarely seen, insight for researchers working in this area: a rich pool of ideas which can be built upon with further innovation.

It’s exciting to see scientific and innovative subject matter go viral: perhaps hinting at growing recognition of scientific innovation's importance in society. Virality may be seen as a proof of concept for an idea, a strong initial confirmation of market interest, and so can often peak investor interest and consumer demand.

If you’re at the centre of a viral craze, or an onlooker in the same field, having your IP strategy effectively prepared and your brand and technology protected allows you to maximise on the opportunities that virality offers. With the right steps, there is no such thing as bad virality.

Niles Beadman is a Cambridge-based patent attorney with Mewburn Ellis working in the chemistry field. 

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