We have worked with university tech transfer offices, small
research companies and investors. Here are our observations on different types
of research.
1. Ground-Breaking Patentable
Research
When scientists opens up a new area of research in their
work, it is more likely to be distant from the prior art, and that will allow
broad patent claims to be obtained. In
addition the work is less likely to be covered by the patent claims of third
parties, and so there are less freedom-to-operate issues. However such research tends to be done by
scientists who are more ambitious and willing to take risks. Ground-breaking research is also more likely
to lead to disruptive technologies.
2. Follow-On Patentable
Research
Follow-on research tends to build on ground-breaking
work. It may represent important
development of a technology and therefore be necessary. However there tend to be more problems
obtaining patents as the previous ground-breaking research will be relevant
prior art, and only narrow claims might be obtained. In addition there may be freedom-to-operate
issues due to patents directed to the ground-breaking work.
3. Commercialisable
Research
Tech Transfer Offices are in the position of having to
identify research that will attract commercial interest. In our experience they
only succeed in finding commercial partners for around 5% of their patent cases. The markets are not necessarily the
most-informed or wisest decision-makers, often following trends and being shy
of areas where there have been a lot of failures.
4. Patentable
Research That Cannot be Policed
Sometimes it is possible to obtain a patent for an
invention, but due to its nature it can be difficult to police infringement of
the patent. Screening methods which
identify useful compounds are an example of this, where it is impossible to
tell from the marketed product how it was identified. These considerations apply to many research
tool inventions, and so the commercial reasons for filing a patent application must
be reviewed carefully to ensure the patent will provide value.
5. Risky Research
Some types of
research are simply not successful. Promising
drug candidates will often turn out to be ineffective in clinical trials. These risk considerations should be properly
understood when investing and when deciding whether to file a patent
application.
6. Competing Technologies
It must be remembered that successful research is often
difficult to translate into commercial success because the new technology must
displace existing technologies, and if that is not economically feasible then
customers may decide not to invest in the new technology. At the moment this is particularly true with
new drugs which are not substantially better than existing drugs.
7. Essential
Non-Commercialisable Research
Certain types of research are needed simply for the
advancement of science, but there has to be an acceptance that there is little
chance that patents or commercialisation will be possible. Clearly public funding is a very good way of ensuring
such research is done.
8. Research in the
National Interest
Clearly every government must review whether or not it needs
to fund certain areas of research to further its national interests. That may be for the purpose of ensuring its
own food security, for example, or to develop a research base in an important
area. However research is not always the
best option. For example it may be
better for certain countries to have more mobile clinics rather than funding expensive
research into new treatments.
9. Researching Appropriate Technologies
Where solutions are being developed to solve certain
problems, there must be choosing of the most appropriate technology. Cost, ease of maintenance and repair, and
ability to operate optimally in local conditions all need to be considered. High tech solutions may not always be the
answer.
10. Research That
Does Not Duplicate Efforts
A lot of research is duplicated around the world. The internet provides a new means to assess
what research has already been done by other organisations and how best to make
use of that. For example pharma
companies are presently offering their existing compound libraries for testing
against new diseases.