15 Feb Trade marks are vital protectors for Scotland’s life sciences sector

Chartered (UK) and European Trade Mark Attorney for Marks & Clerk LLP, Jason Chester discusses.

Within all fields of technology, intellectual property (IP) rights protect innovation and provide the competitive advantage required to build value and reputation.

The significant time and expense required to bring Scotland’s life science innovations to market makes IP planning and strategy especially critical in the early stages of product and business development. For example, for each key innovation it is important to quickly identify the most appropriate form of IP right balancing the legal criteria (patentability, brand distinctiveness etc.) against the need for robust protection, the commercial ambitions of the business and the competitor landscape.

Scotland’s entrepreneurs are already wise to the benefits of patent protection but in order to provide the developing business with full protection around its intellectual investment, it is essential that consideration is given to the benefits of other forms of IP – in particular trade marks.

A trade mark registration provides a basis to prevent third parties from using and registering an identical or confusingly similar mark in the particular jurisdiction covered by the registration and, as a piece of intangible property, it can be licensed, sold or potentially used as security for a loan or mortgage.

As in every industry in which a business is selling differentiated goods and services, branding is important. In the life science industry a strong brand and distinctive trade mark can represent quality, safety and trust, while helping to engender an attractive image that embeds recognition amongst consumers. In turn, this can drive customer loyalty and commercial success.

It is important to bear in mind that patents have a finite lifespan – usually 20 years with the possibility of up to five additional years if the patent satisfies the specific and exacting requirements for supplementary protection certificate term extension. In contrast, if it is renewed periodically – usually every 10 years – and remains valid through being used continuously and in a distinctive manner, a trade mark registration can potentially last in perpetuity.

Thus, once a patent expires and can no-longer be used to control or prevent third party use of a particular invention, a strong brand can ensure that as the market begins to saturate with competing products, a specific product can continue to prosper. It is therefore vital that any patent filing strategy is complemented with protection for different aspects of a brand through trade mark registrations.

Another point to consider is that in life sciences, while most things are patentable, there are pockets of technology which can present difficulties in certain jurisdictions. For example in the US, it is not always possible to secure patent protection for inventions exploiting natural products or diagnostic methods.

Even in Europe, it can be difficult to place adequate patent protection around prior art devices found to have a medical use. Within these areas, a well-promoted and recognisable brand can help secure the market and drive sales in the face of stiff competition. Indeed, such is the potential power of a brand that against a background of a well devised trade mark filing strategy, failing to get patent protection for a particular innovation or development might not be the “be all and end all”.

Nevertheless, it’s important to note that trade marks do not represent an instant solution – it can take time and effort to develop the necessary distinctiveness and goodwill in the marketplace, so it’s important to build a strategic, coordinated and thoughtful IP portfolio from the outset – one which spreads the protection across all the useful IP rights.

The ideal portfolio should comprise a balance of patents, trade marks and, where required, designs. In the life sciences, it is important that those platform technologies – the “crown jewel” innovations that underpin a principal product are protected by way of patents. From this position one can create a portfolio that includes trade marks and designs to ring fence all of the company’s assets.

Specialists like ourselves can play a significant role in advising on the best IP approach for life sciences. Marks & Clerk offers advice on how to robustly protect innovation, while delivering valuable prosecution and strategy services at what can be a hugely important time in a company’s development.

We believe, fundamentally, that a well thought out IP strategy should be at the heart of every business, especially those in the life sciences sector where there are complex interactions between IP and product regulations, making expert advice indispensable.

Issued by Beattie on behalf of Marks & Clerk

For further information, contact:

Lesley McIvor / lesley.mcivor@onlybeattie.com / 01324 602552

Kenny Angove / kenny.angove@onlybeattie.com / 01698 787843

David Walker / david.walker@onlybeattie.com / 01698 787848