In July 2020, Helicon Health was approached by a highly respected medical researcher who had an idea for a new device in the field of endoscopy. He had been referred to Helicon by the Knowledge Transfer Network (KTN – now part of Innovate UK), on the basis of its extensive experience of developing remote diagnostic tools. The inventor was retired after a long, high-level career in medical research; Helicon felt that if his idea could be realised and commercialised, then it could help revolutionise the diagnosis of gastrointestinal tract problems while reducing the need for invasive and potentially painful exploratory procedures.
With any such approach, as Tony Bowden, Helicon’s CEO, explains, a company like Helicon must conduct IP ‘due diligence’ as part of the assessment process. This involves exploring the innovation and patent landscape, both in relevant medical fields and in wider technology, to identify any potential conflicts with IP strategy Bespoke service existing patents. The history of the innovation must also be fully explored, in order to identify potential issues over IP ownership.
Tony Bowden says: “We were extremely impressed by the inventor, who had a successful career in medical science. But whenever you are offered IP like this – and we receive a number of offers like this one every year – you have to go through ‘due diligence’. The next step was to do much deeper research into this inventor’s idea, what similar inventions might be on the market and the background to how he originally came up with it. That process also included patent ‘landscaping’ – looking at patents which might have a direct or tangential bearing on the proposed innovation and how it might work.” Helicon consulted with its contacts at KTN, who suggested a number of IP experts.
Helicon chose to work with Swansea-based Inngot.
Inngot suggested that Helicon should apply to the UK’s Intellectual Property Office for funding under the IPO-administered IP Audit Plus Scheme so it could first establish a catalogue of its existing intellectual property and related intangible assets, which would help understand how the new idea would mesh with the company’s existing activities. Following the delivery of this IP audit, Helicon then became eligible to apply for further Government support (an IP Access grant), to cover the costs of further IP-related services. As Tony Bowden says, “Our relationship with Inngot was a two-step process. First, auditing what we had, and then exploring the potential of the new innovation we had been offered.”
The research into the history of the new innovation looked at questions including:
- how it originally came about;
- whether it was conceived as part of work for a company or institution;
- whether funding was provided, and if so by whom;
- whether the inventor was working alone or with other people who might have contributed;
- and whether there were any relevant contracts or agreements that might have a bearing on ownership of the idea.
As part of the work Inngot uncovered and analysed a number of examples of historic licensing agreements between lone inventors and medical technology companies. This provided Helicon with evidence of what royalty rates are typically paid, whether an upfront fee is usually payable, how improvements to the technology are normally handled and what indemnities and warranties the inventor typically provides to a company in this situation.
Inngot also performed a prior art search to determine what patents were relevant in the area so that the company could make an assessment of whether it may infringe third-party IP if it commercialised this idea and whether it was possible to obtain patent protection itself for the innovation.
Inngot’s research unfortunately revealed that the potential ‘chain of ownership’ for the IP in question was “incredibly complicated,” Tony says.
The results indicated that the inventor had the original idea for the device when he was working with a university 20 years ago. So that raised questions about whether the university had any contractual rights, what contribution might have been made by a PhD student involved with the project, and whether a significant funder could claim rights as well. Unfortunately, it seemed that there was no contract, the student had disappeared and no-one with knowledge of the project worked at the university any more.
By that time, Helicon had invested in making an initial prototype device using the inventor’s ideas and was in the early stages of filing a patent. But, following Inngot’s research, Tony says, “although we felt there was really great potential for a device – and we still do – we decided that we were not the people to take it forward. Positive results from the prototype were slow in coming, and were few and far between. Given that we have so many other opportunities which are tangible and happening, we had to accept the need to prioritise. I still believe it has enormous potential: but it wasn’t for us. Much as I wanted to, I couldn’t make this a personal vanity project!”
So Helicon took the decision to pass all of the work it had done on the project to a third party, including rights to any patent that might result from its existing application, assuming these were granted.
As far as Tony is concerned, Inngot’s advice “helped us reach the right decision. Deciding when to stop pursuing an opportunity is as important as deciding to continue with one.”