Volga | Finance, business | Technology & innovation

Jason Rutt: “Every time you solve a problem you have probably created a patentable invention”

7 Dec '13
Oleg Kouzbit, Online News Managing Editor

A noteworthy event took place earlier this week in Nizhny Novgorod. The local Lobachevsky State University (UNN) hosted a high-profile conference and workshop aimed at sensitizing regional innovators to the importance of intellectual property protection. One of the prominent coaches and presenters that provided in-depth analysis of IP-related intricacies and insights into do’s and don’ts of innovation patenting was Jason Rutt, the head of Patents at Rouse, a London-headquartered firm managing and enforcing IP rights across the globe. A scientist with a PhD in chemistry and legal professional with years of experience under his belt, including patenting at Pfizer, the world’s largest pharma, he illuminated most vital issues many of the young Nizhny Novgorod audiences at the conference had little or no understanding of, giving examples from his pharmaceutical background. Those included ways of protecting technology ideas, crucial differences between patents that do give much value and those that don’t, patenting strategies on an innovator’s path to commercialization, and other helpful pointers. Marchmont met Mr. Rutt for a lobby exchange to talk about his views of Russia’s IP situation and what young innovators at UNN and across national universities need to do to bring their technology commercialization strategies to fruition.

Jason, with the vast experience you have, how would you characterize the IP protection situation in Russia today? In the eye of an international expert, is Russia a country of copycats, like China, or is the situation different?

I would never talk about Russia as a country of copycats. Russia is a country of natural innovators. One only has to look at their numerous contributions to science and engineering; starting with Mendeleev and the periodic table in the 19th century. Russia was the first country to put a man in space!

However I see less evidence that there is an entrepreneur culture, with Russians tending to publish academic articles rather than file patents. Following President Putin’s recent declarations, I am sure that will change.

Lots of things will be necessary to create an entrepreneur culture in Russia such as the state creating benign conditions for entrepreneurs, access to funding, tax breaks for investors, etc. But as an IP professional I see a huge need for more highly skilled patent attorneys.

At present, many attorneys only deal with foreign owned applications at the Russian patent office. In future, they need to be capable of advising inventors through the R&D process, drafting good patents and looking after a portfolio of international applications. It’s something we are working on at Rouse’s Russian Office where we are planning on training Russian attorneys by giving them secondments to our UK Office.

According to stats, phony products disguised under the brand names of the world’s leading pharmas account for something between seven and eleven percent of Russia’s pharmaceutical market. What do you think Russia needs—at both federal and regional levels—to stem the tide and hopefully reverse the situation?

It’s a serious problem and one that will persist until it’s treated as a priority by those at the highest levels. Russia needs to revise its current legislation and introduce more serious consequences for those involved in counterfeiting.

Firstly, the current legislation does not provide an appropriate level of punishment for counterfeiters, particularly given the consequences for public health. Fines are small and imprisonment is rare.

Secondly, there are issues for the police. There aren’t enough police officers (or regulation authorities such as Rospotrebnadzor [a federal agency overseeing Russia’s consumer market] and others) dedicated to fighting counterfeiters. Even if there were enough of them, it’s not possible for them to carry out spot checks against pharmacies and shops unless there is a complaint.

Lastly, I don’t believe stopping counterfeits is an activity that counts against police performance targets, so you can forgive them for not prioritizing this issue. All this needs to change.

Innovators are worried that with such a long time between filing for a patent and actually getting one, their technology will get so hopelessly outdated that it won’t simply bring them any value or revenue. Could you help dispel the worry, or is it indeed the reality?

It takes about five years to get from patent draft to patent grant. Very few technologies go from idea to obsolescence in that time!

However, for the situations where this may be an issue a patent will still prevent their technology being pirated. A patent holder has rights from the moment a patent application publishes. You can make infringers aware of your application and sue for back damages once your application grants.

Many high-tech start-ups at the Lobachevsky State University of Nizhny Novgorod have a clear focus on biomed research and medical instruments related R&D. How, in your opinion, should they proceed commercializing their solutions to (i) avoid infringing other makers’ IP rights (if a similar product with slightly different properties/advantages has been developed elsewhere) and (ii) avoid being copycatted and thus stripped of their potential market share?

The key thing is to protect their own inventions. Focus on doing great research and creating a great product. Every time you solve a problem (and academics are famously modest about the difficulties they overcome) you have probably created a patentable invention.

Talk to a good patent attorney that you like and trust and file lots of well targeted patent applications. Keep your research as confidential as possible. If you do need to disclose details of your work, make sure a confidentiality agreement is signed in advance.

With regard to infringing other rights, as part of developing your products you will be aware of other competitors and probably their patents. If you become aware of significant IP during your research, talk to your patent attorney.

However I wouldn’t invest significant time in hunting for competitor patents until you are close to having something you are contemplating commercializing. That is the time to do a patent search on what other patents are in your area and to then discuss the results with your attorney. There are lots of ways to resolve any ‘freedom to operate’ (FTO) issues. [In patenting, FTO means determining whether a particular action, such as testing or commercializing a product, can be done without infringing valid IP rights of others.]
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