Protecting innovation: navigating the world of patents - a masterclass with Dr Edward Rainsford at Appleyard Lees
In the first of a new series offering expert insights from sponsors of the Cambridge Independent Science and Technology Awards 2023, we talk to Cambridge-based patent attorney Dr Edward Rainsford, a senior associate at leading intellectual property law firm Appleyard Lees IP LLP in Cambridge, about the world of patents and IP to learn about the process of protecting innovations, the timelines involved, the impact of Brexit and more.
Cambridge is renowned as the centre of UK innovation, with more patents typically filed in the city per head of the population than anywhere else.
So the expertise of intellectual property (IP) specialists and IP law firm Appleyard Lees is unsurprisingly in demand here, with the firm steadily growing its footprint since arriving in the city in 2017.
Among the latest attorneys to join the Cambridge team is Dr Edward Rainsford, who joined as a senior associate in October 2022 after 12 years working in London.
“The innovation ecosystem around Cambridge is one of the best in the world, so it is a fantastic opportunity to work with some of the best minds and companies in the life science space,” he says, explaining the attraction of the move.
“Cambridge has such a concentration of innovation that you don’t find in other places throughout the UK or around the world, so it’s exciting to work with so many of Cambridge’s innovators.
“Appleyard Lees is in a strong position to understand what the local innovation community needs and wants, and to assist them with that. I know that people in this firm are very passionate about supporting that ecosystem.”
And he has hit the ground running.
“Coming in from a more London-based area, it’s been fascinating to learn what is here and meeting people from the research parks and attending events.
“Being part of some of the local programmes and networks has been brilliant. It’s been a very busy five months. There are so many events in Cambridge,” he notes.
And Edward has made his mark on one of those – the Cambridge Independent Science and Technology Awards, taking place on May 18 – as he joined the judging panel on behalf of Appleyard Lees, which is returning once again as a sponsor of the Biotech Company of the Year category.
Edward naturally brought IP skills to the panel, but also life science expertise that is so vital to his role. He studied microbiology for his degree at Reading, before completing a PhD in virology at Warwick.
“I always thought there was a very interesting interaction between microbes and the human body – specifically that viruses will enter into a cell and completely change the programming to utilise all of its facilities to make new nucleic acids and proteins, in order to replicate and reassemble those components back into new viruses, which can then go on to infect further cells,”
After a stint as a postdoctoral research scientist in Warwick, Edward spent three years in the US as a research associate at the University of Virginia.
“It was a fascinating experience,” he recalls. “I found a professor that I really wanted to work with there and she decided to give me a position, so I moved out there. It was virus research, looking at a member of the rabies family – the rhabdo family – again on replication.
“I really enjoyed the US. It’s somewhere I wanted to go and spend some time and it was in the interesting transition between George Bush and Barack Obama, so it was a fascinating time to be out there in those small liberal university towns and to see the country go through that. But ultimately I decided I didn’t want to stay out there forever, so I decided to come back and change tack and go into IP law.
“Everybody who is a patent attorney has to have at least a degree level in science so they can understand the innovations that their clients are trying to gain patent protection for.”
An MSc in the management of IP law at Queen Mary University of London followed, before he began his work in the capital.
Now at Appleyard Lees, he helps clients ranging from academics to large biotech organisations to protect their inventions, in areas such as antibody drugs or microbiome research.
“We work with start-ups and university spin-outs, as well as larger biotech and life science companies,” he says.
Whatever the stage of the company, timing is always a part of the conversation around patents.
“When to file a patent application is an important consideration, particularly for start-ups,” Edward notes. “There can be good reasons why you might want to wait. You might want to get a lot of data and put that into your patent application.
“But there are also good reasons why you might want to file a patent application earlier.
“Considerations can vary, depending on the size of a company and what stage it is at, and also what the innovation is and whether it is a competitive field.
“You might want to file to get your ‘priority date’, because there may be concerns about somebody filing a patent application before you on something that is a closely related innovation.”
A priority date is the first date that a patent application is filed, and is key to determining whether any subsequent application for the same invention can still be regarded as novel.
“We get involved at different stages and there are lots of considerations, including wanting to have patent applications on file to attract investors,” adds Edward. “It’s not always just about where the science is at.”
The biggest question, of course, may not be when, but rather what exactly has been invented and can be protected.
“We talk to people about where their projects are at, but also ask what ‘prior art’ they are aware of. What publications have gone before? What makes their innovation new and non-obvious compared to what is out there already?
“It is a determination that we have to make about what their new invention does beyond what’s out there and its patentability.
“It may be a new antibody for a certain treatment, or a platform – like a screening methodology or a methodology to generate certain molecules.
“There are matters that are excluded from patentability. So we have to make a judgement on whether it falls under one of the exclusions or whether there is a way around that.
“The use of stem cells for commercial purposes might be excluded, for example, but if you can show you can create those without the destruction of embryos, that might be patentable.”
In the rush to protect potentially commercial valuable innovations, there remain important considerations around furthering research...
“There are exemptions for purely academic research,” notes Edward. “And when it comes to commercialisation, licences may be needed. We can assist in negotiating licence agreements in order for people to be able to commercialise their research into a product or platform.”
Antibody therapeutics remain a big area, but there are other trends emerging.
Edward observes: “Tech bio – with machine learning and AI integrating into the biotech space – is a very big trend. How do we integrate these new technologies to assist with biotechnology in innovation? They are good at taking very large amounts of data and finding the relevant information much more quickly, in an automated fashion.
“We have people in the firm focused on the AI/machine learning space and involved in the software space. We often work together on those projects, because this is where computer technology and life sciences meet. There is an interplay between the two disciplines, so we collaborate on those innovations.”
The process of filing for a patent can be quicker than you might think. “It depends on the technology and how complex it is. “Ideally, you would want a week or a couple of weeks to get the process done. Sometimes we file patent applications with sequence lists with hundreds or even thousands of different sequences for antibodies or parts of antibodies and that can take a little longer, but things can be done quickly if they need to be,” explains Edward.
Filing for a patent is, however, only the beginning of what can be a lengthy endeavour.
“The process is that you’ll file your initial GB patent application and you have 12 months when you can find additional detail which you integrate into what is called a PCT International application.
“At that 12-month point, you can either file in lots of different territories and backdate it to the date of the original GB application, or you can file a PCT International application, which delays the time for filing in lots of different countries.
“It gives you about 30 months from the initial filing date of the GB application and you can review the search report.
“If you find a lot of prior art, it might be difficult to patent in some areas, or you might find you do want to file in, for example, Japan, China and the US too.
“Then you start getting examination reports from patent offices, and you go back and forth with them. They may say the claim is too broad and you lack novelty over documents that they’ve found. You can amend what you claim is your invention, so you may need to add in more limitations to get around some prior art or reword it.
“This back and forth usually goes on for a couple of years, so it can be quite a process to negotiate with the patent offices.
“But in some territories, you can get it done quite quickly. The UK is more likely to be quicker than others, but it can depend.”
Perhaps surprisingly, Brexit has not made the process much more complicated – yet.
“The European Patent Office is not actually an EU body so the UK can remain part of it and we can still prosecute and obtain European patent applications through that office,” Edward explains.
However, a long-awaited Unified Patent Court (UPC) is coming into force, after a series of delays, from June 1.
“At the moment, you don’t get a single patent to cover Europe. You have to choose which countries you want protection in and you pay a fee in each territory and renewal fees each year to each patent office,” explains Edward.
“The unitary patent will give you a single patent with a single renewal fee that you pay to one place and that will cover the European Union, although some countries have opted not to be a part of it.
“The UK can’t be a part of it, so you’ll still need to pay renewal fees and validate in the UK.”
With a number of countries opting out, it means UPC litigation will exist alongside national patent litigation, even in the EU.
And for biotech companies, it also means the court where companies would sue for infringement and seek reparation will not be in London, as originally envisaged.
The impact of the UPC across Europe will be watched with interest, Edward notes.
In the meantime, he is enjoying growing accustomed to life in Cambridge with his new colleagues.
“We really enjoy working with so many Cambridge networks and programmes, and with the ecosystem,” says Edward. “It’s something that’s been great to start to be a part of since I’ve moved over to Appleyard Lees.”
And you get the sense he’s just getting started.
Limited tickets for the Cambridge Independent Science and Technology Awards 2023 are now on sale, priced £35 plus VAT. The event takes place at the Faculty of Science and Engineering at Anglia Ruskin University in Cambridge on Thursday, May 18, starting with a networking reception with hundreds of leading lights from the Cambridge science and tech scene, before a ceremony at which the winners will be revealed. Book tickets at Eventbrite here.