Capture the value in soft IP

Algorithms, designs, know-how and proof of concept are joining patents as key elements in today’s innovation mix, says Carol Daniel at City, University of London

---

Share

Carol Daniel

---

The process of IP commercialization is evolving with the technology-driven solutions that industry is now developing. When knowledge generation is a major driver of innovation, it is making what is regarded as soft IP more prominent in technology and knowledge transfer. Key areas of innovation include: artificial intelligence, machine learning, automotive, energy systems and storage, therapeutic medicine, social engineering, software, digital media and advanced sensor systems. Most of these areas of innovation are also increasingly being underpinned by AI and a knowledge base implemented through information technology. Therefore IP around algorithms, designs, images, documentation, know-how, written material (media) and proof-of-concept models, often referred to as soft IP, are increasingly important. It is not always possible to file these ideas and developments as patents as they may not meet the criteria for patenting and/or they involve many different concepts that taken as a whole may make the cost of patenting uneconomic weighed against the potential commercial benefit. In such circumstances, the IP must be kept confidential and only disclosed to interested parties under a non-disclosure agreement. In other circumstances and where this is feasible, value can be added to the soft IP by patenting certain key elements, such as specific recipes, methodologies, processes and algorithms; alternatively, there may be scope for adding value by protection through registered designs. Compared to a traditional patent, still widely used for IP protection in engineering (eg, sensors and mechanical systems) and medical-related technologies, the use of trademarks and logos are becoming important for adding value to innovations arising from subject areas where patent protection is often not feasible such as the social sciences, arts and humanities. A previous focus on patentable IP is now widening to encompass these softer forms of IP. However, they are often more difficult to licence, as there tends to be less receptiveness from industry that often expects a patent portfolio alongside the research outputs. Such inhibitions can be overcome by creating start-ups that bring together researchers and managers so that knowledge can be more easily transferred into the business. The university becomes a key player in such collaboration allowing the IP to be commercially exploited in an effective way, particularly where there is only know-how or documentation. In some cases, particularly those that lead to a software or non-technical business, some initial funding can add value to the existing IP, whether by contracting professional software developers to turn the basic research into a proof of concept or providing market research for the business to identify specific market opportunities and potential early-stage customers. The software and the market know-how in the company database, as well as any trade marks, become an essential and valuable part of the IP package. These combinations of soft IP in the form of software, documents, designs, concepts, drawings, designs and know-how are finding their way into widespread use through consultancy, co-design, apps and e-learning.

▪ The full version of Carol Daniel's article on capturing the value in soft IP appears in ‘Managing Intellectual Property Today', first edition, November 2019. See details here.