Hidden Value: The Digital IP You Didn't Realise You Have

• Published date: 06 April 2023
• Subject Matter: Intellectual Property, Patent, Trade Secrets, Trademark
• Law Firm: Potter Clarkson
• Author: Mr Christopher Hartland

Today every business is a digital business. If you don't believe me, think about the following scenarios:

• A pharmaceutical business uses external consultants along with their own technical know-how and data to develop software that predicts potentially effective pharmaceutically active ingredients.
• An apple orchard develops a system of using drone-based surveillance to check for the optimal time to pick apples.
• A retail business develops a novel approach for visualising and browsing their wares on their website.
• A manufacturing business develop an alternative automated approach for controlling their equipment that leads to reduced manufacturing times or costs.

Day-to-day these businesses would doubtless describe themselves as being a pharma, agricultural, retail and manufacturing business respectively. However, you can see immediately that as they continue to develop, they have become pharma, agricultural, retail and manufacturing businesses with a significant digital element.

And these digital elements will have hidden value, value that will never realise its financial and commercial worth if it remains hidden, ignored and/or unprotected. Instead, this hidden value needs to be captured and leveraged in the same way as all the other IP at the heart of your business.

WHAT DIGITAL IP MIGHT YOU HAVE?

Let's look at the three primary registrable IP rights, patents, designs, and trade marks in turn.

When it comes to protecting digital inventions, patents are probably the first IP right that comes to mind. However, isn't it just too difficult to patent software?

Well, it is difficult if not impossible to use patents to protect known algorithms or systems applied to new scenarios, the automation of known processes and data itself.

However, if you can show your invention has a technical effect, as the patent offices like to say. Unfortunately, for most of us, this phrase doesn't mean much. Here is one of the ways I try to think about the technical effect criterion:

Is the improvement given by your invention:

• Measurable;
• Repeatable;
• Objective.

Once you have identified the part of you invention that meets these three criteria, then you can ask yourself if that remaining part of your invention is obvious or not.

If it seems that even part of your invention meets these requirements, your software could well be patentable.

Even if it isn't patentable, you may be able to protect your digital innovations using trade secrets.

Trade secrets are all too often the...