We are happy to share that Mathys & Squire is a Silver sponsor of Life Sciences Patent Network (LSPN) Fall 2026, taking place from 2nd to 3rd November in San Francisco, California.
Partners David Hobson, Iain Armstrong and Nicholas Fox will be attending LSPN Fall 2026, as well as giving a presentation on “Making Space for your Blockbuster in Europe,” discussing the options available to optimise your patent clearance strategy amidst an evolving legal landscape.
LSPN is a major life sciences conference aimed at IP professionals, focusing on patent drafting, portfolio management, enforcement, prosecution and regulation across the life sciences. The conference will explore the ways in which recent legal and technological developments may influence how companies and private practice navigate the intricate world of life sciences intellectual property law. Topics covered will include the latest UPC case law, IP deal-making, optimising SPC term in Europe, geopolitical shifts and patent cliffs reshaping the competitive environment, antibody claims strategy post-Teva v. Lilly and the impact of AI.
David Hobson is highly experienced at providing commercially-focused advice for UK and overseas multinational pharmaceutical clients operating in the field of biologics, with particular expertise in the botulinum neurotoxin, cell therapy and antibody fields. He works closely with his clients’ commercial and scientific teams to map out optimal filing strategies and excels at putting in place and defending robust, valuable patents. His experience also includes performing competitor and intelligence gathering and patent monitoring, advising on high-value FTO matters, and representing clients in key offensive and defensive opposition and appeal proceedings.
Iain Armstrong has over 25 years of experience in guiding clients of all types through the life science patent landscape. With a focus on drafting, prosecution and due diligence, Iain provides practical advice to his clients across the whole patent life cycle, ensuring that their IP strategy is in line with their commercial goals. Having worked across a broad spectrum of life science technologies, he has a particular interest in cell therapies, antibodies, personalised medicine, and wound healing. In addition, he has considerable experience in patent prosecution, co-ordinating activity across multiple jurisdictions.
Nicholas Fox is a solicitor and UK & European patent attorney, specialising in contentious and non-contentious intellectual property matters with a focus on patent litigation in the English courts and acting before the European Patent Office. He has experience litigating cases involving a wide range of technologies including applications for preliminary relief for pharmaceutical products and opposition work relating to a method of detecting a novel fusion gene for targeted cancer treatment. He also has acted on behalf of clients in international ownership disputes in the pharmaceutical field.
Our team is looking forward to catching up and exchanging their expertise with other leading IP attorneys and life science industry experts from around the world. Please reach out to our team if you are interested in arranging a meeting.
For more information on the event, visit the website here.
David Hobson – Partner | [email protected]
Iain Armstrong – Partner | [email protected]
Nicholas Fox – Partner | [email protected]
The UK Supreme Court’s decision in Emotional Perception AI Ltd v Comptroller-General of Patents, Designs and Trade Marks was widely regarded as a watershed moment for the patentability of artificial intelligence inventions in the UK. Yet, less than a year later, the UKIPO has refused the application on remittal, concluding that the claimed artificial neural network (ANN) recommendation system lacks an inventive technical contribution.
Although the deadline for appeal has not yet passed, an appeal does not presently appear likely. Attention can therefore now turn to the broader questions: what does the UKIPO decision tell us about technical character, inventive step and the patentability of AI inventions in the UK?
As reported previously when ruling on the Emotional Perception appeal, the Supreme Court fundamentally reshaped the legal framework for computer-implemented inventions.
Whilst confirming that artificial neural networks can fall within the concept of a computer program, the Court moved away from the traditional Aerotel analysis and embraced principles drawn from G 1/19. Most significantly, the Court introduced an intermediate step requiring identification of those claim features that contribute to the technical character of the invention before inventive step is assessed.
The Court deliberately avoided deciding whether the claimed recommendation system possessed technical character. Instead, that issue was remitted to the UKIPO.
On remittal, the UKIPO accepted that the application was not excluded from patentability merely because it involved an ANN.
The decisive issue became whether the claimed ANN architecture, training objectives and techniques for closing the “semantic gap” contributed to the technical character of the invention.
The examiner and subsequently the Hearing Officer concluded that they did not.
In broad terms, the invention was characterised as seeking to improve the semantic or emotional relevance of recommendations provided to users. Once that objective was regarded as non-technical, the specific ANN learning objectives and convergence mechanisms were treated as differences that could not support inventive step.
With those features discounted, only conventional computer hardware and implementation remained. The result was a finding of obviousness.
The applicant relied heavily on passages in G1/19 recognising that:
The Hearing Officer accepted that key principles from G 1/19 had been endorsed by the Supreme Court and that the Enlarged Board of Appeal’s opinions represented settled law which the Supreme Court had indicated the UKIPO should follow. However, he rejected the proposition that the entirety of the Enlarged Board’s reasoning had become binding UK law.
As a result, much of the wider reasoning of G 1/19 was treated as highly persuasive rather than mandatory.
The Applicant’s case focused heavily on the technical implementation of the ANN, including its learning objectives, vector-space representations and semantic-gap-closing mechanisms. Whilst those features were said to contribute to technical character, the case ultimately centred on whether they could be linked to a clearly identifiable technical problem and technical effect.
The Hearing Officer ultimately characterised the remaining technical contribution at a high level as “Computer hardware running a program (the ANN) that selects and outputs a file”.
The Applicant argued that the processing undertaken by the ANN was such that the ANN outputted a “semantically better file”. However, the Hearing Officer concluded that how a file was chosen was a non-technical difference and therefore did not contribute to the technical character of the invention.
The Hearing Officer’s decision illustrates that the debate over technical character is, in many cases, really a debate about technical effect. Once the Hearing Officer concluded that the claimed ANN produced only a “semantically better” recommendation and that this result related to human perception, which is inherently subjective, rather than technology, the remainder of the inventive-step analysis largely followed. This reflects long-established EPO practice under which features that do not contribute to a technical effect cannot support inventive step.
Such an approach is entirely consistent with EPO practice.
In G 1/19, the EPO’s Enlarged Board of Appeal stated that “patent protection is reserved for creations in a technical field” and that claimed subject matter must have a “technical character” or, more precisely, involve a “technical teaching“, namely an instruction addressed to a skilled person as to how to solve a particular technical problem using particular technical means. The Enlarged Board further noted that the Basic Proposal for the Revision of the EPC expressly stated that these considerations regarding technical character apply equally to the assessment of computer programs.
Under established EPO jurisprudence, features that do not contribute to the technical character of an invention cannot support inventive step. Similarly, EPO case law makes clear that where no relevant technical effect can be identified, inventive step will generally fail regardless of the sophistication of the underlying implementation.
The decision also resonates with established principles from English patent law.
In Actavis UK Ltd v Novartis AG, Jacob LJ observed that arbitrary claim limitations which possess no technical significance cannot support inventiveness. Similarly, in Sandvik Intellectual Property AB v Kennametal UK Ltd, Arnold J emphasised that a selected feature is not inventive merely because it differs from the prior art. Its alleged technical significance must be established.
The real disagreement in the case was therefore not whether non-technical features should be disregarded. Both UK and EPO practice broadly accept that proposition. Rather, the key question was whether the ANN learning objectives, semantic-gap-closing mechanisms and resulting file selection in the Emotional Perception System should themselves have been regarded as producing a technical effect.
Comments published following the decision suggest that some supporters of the application believe there are serious grounds for appeal. Criticism has focused on the operation of the new “intermediate step” and allegations that the UKIPO has, in substance, drifted back towards a contribution-based analysis reminiscent of Aerotel.
Yet there are also practical realities.
The dispute has already been litigated before the UKIPO, the High Court, the Court of Appeal and the Supreme Court before returning to the UKIPO on remittal. Any further appeal would involve substantial cost, delay and uncertainty.
At present, there appears to be no indication that a further appeal will be pursued. If that remains the case, the October 2026 decision may stand as the first significant UKIPO attempt to apply the Supreme Court’s new framework in practice.
If the Emotional Perception saga is indeed approaching its conclusion, its legacy may be less about the patentability of ANNs and more about the future meaning of technical character.
The Supreme Court removed many of the barriers associated with excluded subject matter. The UKIPO’s remittal decision demonstrates that the focus has now shifted elsewhere.
For applicants seeking protection for AI inventions, the key question is unlikely to be whether machine learning techniques are sophisticated or novel. Instead, the crucial question will be whether those techniques can be linked to a clearly identifiable technical problem and a technical effect arising from their implementation.
In that sense, Emotional Perception may mark not the beginning of a more permissive era for AI patents, but rather the beginning of a new and more nuanced debate about the relationship between technical character and inventive step.
If no appeal is filed, the Emotional Perception litigation will have achieved the unusual feat of reshaping UK law whilst leaving many of the most important practical questions unanswered. The Supreme Court settled the law on patent eligibility. The UKIPO’s remittal decision shows how the debate has now shifted to technical character and inventive step. Whether future applicants can successfully demonstrate technical effects in AI systems will be key.
We are proud to announce that we have successfully passed the ISO 9001 and 14001 audit for ten years in a row.
The British Assessment Bureau manages the implementation of the international standards developed by the International Organization for Standardization (ISO), assessing businesses on their dedication to excellence in work processes and management systems.
The certification ISO 9001 (Quality Assurance) highlights the firm’s commitment to outstanding customer service, consistently satisfying and going beyond our client’s expectations. Receiving this certification demonstrates that we meet the globally recognised benchmark.
ISO 14001 (Environmental Management) exhibits the firm’s efforts in aligning its work with environmental guidelines, ensuring we use resources sustainably and reduce waste. The certification signifies that we are actively committed to reducing our carbon footprint.
We are proud of our attentiveness to our clients as a firm and hold our environmental impact to extremely high standards. It is an honour to be able to formalise our progress and we hope to continue in this way, whilst always staying aware of how we can improve.
To find out more about ISO 9001 and 14001 click here.
A robot is a highly complex technical system, integrating mechanics, sensors, electronics, control software and artificial intelligence. As robotics reaches a stage of more widespread deployment, securing intellectual property protection to preserve a competitive advantage is essential. However, the complexity of robotics can make it challenging to identify what aspect will yield a patent of value.
Inventors often have a much higher bar for what they consider to be patentable than intellectual property law. They may see a development as routine or obvious but, put into context of the encompassing robotic system, even a small internal change can have a significant impact on a robot’s external function.
But discovering that, in theory, many things could be patentable is just the first step. You may think that trying to get as much coverage is the best route, but IP is more than protection. It is a strategic asset which, when dealt with thoughtfully, can be highly rewarding. Especially in a sector like robotics which is rapidly evolving and becoming increasingly crowded, with many different companies and technologies coming into play.
On 30th September, Partner Andrew White took part in a webinar with IP Business Academy, discussing the questions which may arise when building an IP strategy for innovation in the field of robotics. Click the video below to watch the full webinar or read on for an overview of the key insights.
When crafting an IP strategy from scratch, it is important to firstly understand what exactly a patent is trying to protect. A patent gives you the power to exclude your competitors from selling your invention. But to be granted a patent, your invention must be novel, non-obvious and make a technical contribution.
AI and software are integral to robotic systems, forming the brain which controls the robot’s physical parts. There are a lot of misconceptions surrounding what can and cannot be patented when it comes to the AI and software, but it is still very possible to protect an AI or software invention, as long as the invention provides a technical solution to a technical problem. For example, software developments may improve a robot’s ability to regulate its temperature or advanced hardware in the robot’s hand could lead to improved dexterity.
In robotics, the technical application often lies in the interaction between the invention and other elements of the system, and how this impacts the robot’s capabilities.For example, the functional relationship between sectors and actuators, perception and movement, software and hardware, will determine how a machine interprets its surroundings, adjusts its movements and to what extent it completes a desired task.
The fact that an AI model used within a robot does not exist independently, but always as part of an interaction with the real world can make finding the technical application in robotics more straightforward. Nevertheless, AI models or software which may have a useful application in robotics are not always developed with that in mind.
We have discussed the factors which determine whether or not an invention may be patentable. The next step in an effective IP strategy is rightsizing. In other words, just because you can patent something, doesn’t mean that you should. A patent should play a strategic role in relation to your business goals and there should be valid commercial reason to pursue a patent. Robotic systems are highly complex with many interacting parts, so using a matrix to rate each element against different criteria which will determine patent value can help cut through the noise.
As discussed, patentability is key and refers to how likely a patent is likely to be granted after filing. But there are two other main criteria which are just as important. Firstly, you need to consider commercial potential. The long-term value of your invention is ultimately dependent on what customers will buy. If a customer is paying for a specific use case, you will be in a winning position if you have patented that. Secondly, you should consider how easy it will be to detect infringement of the patent by third parties. For software inventions, for example, it can be very difficult to know if competitors are infringing on your patent. If you patent an invention, it necessarily ends up in the public domain; therefore, if you can never detect infringement, it may be better to keep the invention as a trade secret, so competitors cannot gain access to it.
Ultimately, your filing approach will depend on your competitors and what the sector is doing, as well as the business model for your company. For example, whether you intend on primarily licensing your technology or using it yourself will impact your strategic priorities.
Robotics companies rarely operate in a bubble. A functioning robotic system brings together many different forms of technology, often supplied or developed by different parties. As a result, it can be difficult for any one player to obtain control over the entire system and attempting to do so may not always be the most commercially effective approach.
Companies can be strategic about which technologies they share, license or make available, and which will remain under their sole ownership. Licensing can enable them to access technologies they do not want to develop themselves, but ownership should be carefully managed, establishing at an early stage who owns any resulting IP, how it can be used, and whether rights extend to future developments or improvements.
These relationships can also create challenges for a company’s freedom to operate (FTO). In a crowded and rapidly developing field such as robotics, where a company’s product incorporates technologies developed by multiple players, third-party IP rights need to be considered, and it may not always be possible to eliminate the risk of infringement entirely.
Companies can carefully monitor competitor activity, but sometimes it may be impossible to completely mitigate the risk of infringement. A strong IP portfolio can create opportunities for cross-licensing or provide negotiating leverage if disputes arise with competitors.
It is crucial for robotics companies to revisit their IP strategy on a regular basis and judge whether it still aligns with their commercial goals as their technology, funding position and target markets develop.
Obtaining patent protection can be a lengthy process. A company may initially file a few patent applications which support their business plan and then encounter significant costs further down the line. At the same time, the company may have created new IP or changed its commercial priorities.
There can be a natural reluctance to prune a projected portfolio if you have already spent money, but if there’s been a shift in where the value lies, it is important to adjust your strategy accordingly.
AI and software models used in robotics are evolving at a rapid pace, but the patent system is relatively slow. Robotics companies need to consider the risk of filing a patent which could be commercially obsolete in three or four years.
Firstly, there is value to having a patent pending, as it shows intent and clear direction, as well as ownership of IP and a willingness to strategically manage it. Secondly, to file a patent which will have long-lasting value, this may mean focusing less on what a particular iteration of a model can achieve and more on the underlying functionality, which brings us back to our initial discussion of technical contribution. What problem does the technology solve? How does it interact with other components of the robotic system? What technical effect does it produce, and what aspects of that interaction are likely to remain relevant even as the model changes?
Our attorneys have specialist expertise across robotics, AI, software and related technologies. We make sure to get to know each of our client’s specific commercial objectives, enabling us to translate our in-depth understanding of the sector’s technology and competitive landscape into a tailored IP strategy. From assessing patentability and identifying which aspects of an invention are worth protecting, to determining where and when to file and how to build a portfolio that maximises commercial value, we make your IP work for you.
To ask our attorneys any questions you may have, click here.
Partner Michael Stott has been featured in Aesthetic Medicine magazine with his article discussing patent activity in the cosmetics and aesthetic medicine fields, and how smaller players are playing a larger role in advancing technology in the field.
His article offers useful guidance to SMEs who are innovating in the cosmetics sector, outlining how to leverage intellectual property assets to add value to a business.
Read the full article below.
This article was first published in the October 2026 edition of Aesthetic Medicine here.
In 2020, AbbVie acquired Allergan, owner of Botox®, for $6.3 billion. Whilst the foundational patent for Botox® (Allergan’s leading revenue generator) expired in 2007, Allergan had filed additional patents for specific formulations and manufacturing methods which extended protection until 2029, sustaining its market dominance and the acquisition price.
Allergan’s carefully thought-out IP strategy paid off, and it seems that other SMEs in the aesthetic medicine space are following the same playbook.
Scientific advancements are raising the bar in the aesthetics industry. Beauty brands are exploring new active ingredients and delivery systems, whilst consumers are looking for scientific evidence over sweeping claims, and genuine longevity over surgical interventions. Recent regenerative entrants to the space include polydeoxyribonucleotides (PDRN), purified DNA fragments which have anti-inflammatory effects and trigger biological repair mechanisms; exosomes, natural messengers which are harnessed in skincare to prompt cell repair; and peptides, which are the building blocks of proteins like collagen and elastin.
As opportunities for innovation have expanded, so too has the growth in patent filings. The number of patent applications related to cosmetics (IPC codes A61Q, A61K8/00) increased sharply from 2007 until 2017 and has stayed steady over the last decade. Since 2007, around 121,000 patent applications for preparations for care of the skin (IPC code A61Q19/00) have been filed. Of those, the most significant proportion has been anti-ageing preparations (IPC code A61Q19/08), with 44,000 patent applications since 2007. Other subclasses include preparations for chemically tanning the skin and preparations for treating cellulitis.
The most influential aesthetics companies are prioritising patent-protected science. L’Oréal, for example, filed 725 patent applications in 2025, exploring new technologies like PDRN, light therapy, and AI to analyse biomarkers of longevity.
However, whilst larger companies lead their own R&D, increasing standards in cosmetic technology has pushed them to outsource innovation to SMEs, expanding their range with products which blur the line between cosmetics and biotechnology/ pharmaceuticals. For instance, L’Oréal is collaborating with biotech company SENISCA, whose work focuses on modulating RNA biology to tackle cellular ageing, and Timeline, a Swiss brand who have developed a supplement containing Urolithin A, which enhances mitochondrial function to reduce signs of ageing.
Two decades ago, the number of cosmetic patent family filings by the top 100 companies was close to the number of cosmetic patent family filings by all other companies combined. Now the picture has flipped. The number of patent families filed by smaller companies grew significantly in the 2010s, reaching nearly four times the number of filings by established leaders. Smaller players have become significant patent filers, enabling them to protect their market share, and assign or licence their technology to other companies for large returns.
Timeline’s Mitopure® (their Urolithin A supplement), for example, is protected by over 80 patents. Solésence, a skincare and sun-protection brand which licenses its technology to major beauty brands, shared that it had increased its patent portfolio by 20% to more than 120 patents in 2025. In their annual conference, their CEO described the strategy as creating a “valuable picket fence,” protecting their market control. And the impact is clear: in roughly two years, they have nearly doubled their revenue.
IP portfolios are also essential leverage if planning an exit strategy. Larger companies are looking to buy a defensible market position, rather than the product itself. Acquiring a company with patented technology gives them the opportunity to dominate a new category in the market. Without patent protection, a product loses its singularity and, therefore, its value.
Whether you are looking to build an IP strategy from scratch or are managing an established portfolio, reach out to our team of patent attorneys with specific expertise across chemistry, pharmaceuticals and biotechnology, including in the cosmetics and aesthetic medicine industry, to hear how we can help.
We are delighted to announce that Mathys & Squire has been commended in The Legal 500 2027 in both PATMA: Patent Attorneys and PATMA: Trade Mark Attorneys categories.
Patent Partners Chris Hamer, Alan MacDougall, Martin MacLean, Dani Kramer, Andrea McShane, Oliver Parish James Pitchford, Philippa Griffin, James Wilding, Dylan Morgan, and Managing Associate Alex Elder are all featured in the 2027 edition of the directory.
Mathys & Squire’s trade mark team also received recognition in the directory. From our trade mark practice, Partners Claire Breheny, Rebecca Tew and Harry Rowe, and Associate Emma Pallister have been featured in the 2027 edition.
“Mathys & Squire stands out through its combination of deep technical expertise and practical commercial advice. As a client operating in a highly technical chemistry and materials science environment, I have found the team to possess an exceptional ability to understand complex scientific concepts quickly and accurately.”
“The individuals we work with at Mathys & Squire are exceptional, and it is genuinely the quality of these relationships that sets the firm apart from competitors.”
“I really cannot think of any area for improvement.”
“The staff we deal with have a very deep and profound knowledge of the biotechnology sector and how it applies to intellectual property. This is extremely useful to us.”
“Harry Rowe is a standout practitioner. Harry consistently provides savvy guidance and sage legal analysis on complex trademark matters. He does not just recite the law; he translates it into strategic options that align perfectly with commercial objectives.“
“I have worked with Claire Breheny at Mathys for a long time. I consider her to be one of the best TM practitioners in the UK. She provides consistent, sound, and pragmatic advice. The pragmatic aspect is what really makes her stand out.”
For full details of our rankings in The Legal 500 2027 guide, please click here.
We extend our gratitude to all our clients and connections who participated in the research, and we extend our congratulations to our individual attorneys who have earned rankings in this year’s guide.
Partner Rebecca Tew has been featured in World Intellectual Property Review, revealing data which shows that UK influencers are neglecting trade mark protection in comparison to global influencers.
Her commentary highlights how if influencers do not secure protection for their brand identity, this may leave them vulnerable to people taking advantage of what they have built, especially with the sudden rise of generative AI.
Read the extended press release below
Only 45% of the top UK social media influencers have registered a trade mark versus 80% of the top global influencers, says Mathys & Squire, the leading intellectual property (IP) law firm*.
Influencers like Logan Paul and Emma Chamberlain have filed trademarks in the US. In the UK influencers that have registered trade marks include Molly-Mae Hague, Zoe Sugg and Mrs Hinch.
Having a trade mark gives influencers intellectual property rights over distinctive elements of their brand, such as names, logos, slogans and social media handles.
Rebecca Tew, Partner at Mathys & Squire, says influencers who delay filing trade marks risk their brands being copied, imitated or misused without being able to take effective legal action.
“A lot of what influencers do from the very start gives rise to intellectual property and whilst copyright is afforded automatically to their content, most of them have almost nothing on the trade marks register to protect their brand. The lack of IP protection leaves their names, handles, logos and slogans exposed to copycat accounts, impersonation and free-riding particularly as their presence grows.”
“Generative AI adds a new layer of urgency. Fraudsters can now clone an influencer’s face or voice and create fake videos or bogus endorsements that followers may struggle to identify as fake. A registered trade mark can give creators clearer footing to challenge AI-generated imitations of their content and accounts.”
“Influencers often wait to register a trade mark only when they have built a successful business rather than protecting their own name and key elements of their content creation from the outset. Vlogging, entertainment, digital content, marketing and the promotion of goods for others are all services that can be protected under a trade mark registration in their own right.”
Even in the cases where influencers do file trade marks, they often fail to use all the IP protection tools available to them.
Rebecca Tew explains: “Today, influencers can register their brands not only for specific products but for the business that is their content creation. An influencer who registers their name for a specific collaboration or deal, for example a cosmetic product or clothing range, may leave the door open for others to use a near-identical handle for other products or services.”
“Broader, well-planned protection covering both current and foreseeable activities provides far stronger grounds to act against fraudsters and makes sure that the influencer is ready with names, slogans or handles protected when merchandise or endorsement deals come along.”
“A growing problem is the risk of false association, where a creator’s name, handle or likeness is misused to imply an endorsement or connection that does not exist. Without a registered trade mark, taking action can be far harder and persistent infringements will affect the commercial value of the influencer’s brand.”
“Considering the increasing size and importance of the influencer industry it is a concern that use of trade marks by the sector in the UK is not wider. Social media moves incredibly quickly, and taking legal action against the huge number of copycats that can emerge is very difficult without good registered trade mark protection.”
* According to Mathys & Squire research. The top 20 US influencers were taken from Forbes Top Creators list 2025 and the top 20 UK influencers were compiled by Mathys & Squire based on Instagram followers.
For ambitious founders preparing for their next funding round, pitching to venture capital (VC) or private equity (PE) investors is as much about demonstrating a clear understanding of risk as it is about painting a vision of achievable growth.
Investors see hundreds of pitch decks claiming “first-mover advantage” or “revolutionary technology.” However, sophisticated investors know that first-mover advantage is temporary; without a structural barrier to entry, a well-funded competitor or incumbent can replicate the product or offer customers a credible alternative.
An effective intellectual property (IP) strategy turns legal rights and confidential know-how into commercial protection. When investors assess a business, they consider whether its technology, brand and know-how create a barrier to competition, or “defensibility layer”, and support future revenue, margins, and long-term enterprise value.
Let’s walk through how institutional investors assess IP during due diligence, how to present your IP portfolio as an unassailable moat, and the key steps founders must take to leverage IP to secure VC funds.
Investors do not view IP as a passive collection of certificates or filing receipts. They evaluate IP venture capital readiness through the lens of enterprise risk, valuation preservation, and exit potential.
When evaluating your pitch deck and data room, institutional investors will usually want answers to three key questions:
A high patent count does not automatically produce a high valuation. Investors value quality, relevance, and commercial alignment – protecting the features that drive your customer acquisition and revenue generation.
During formal due diligence, VC technical advisors and PE legal counsel will stress-test your asset portfolio across four distinct quadrants:
Investors assess whether the business has chosen appropriate forms of protection for the assets that matter:
Patent ownership and freedom to operate answer different questions. A patent gives its owner a right to prevent certain acts; it does not itself give permission to launch a product. Investors will therefore ask how the business has identified and managed third-party patent risk in its key products and markets. Appropriate freedom-to-operate work should be proportionate to the technology, territories and stage of development. No search can guarantee that a dispute will not arise, but a well-scoped analysis can identify material risks early enough to design around them, seek a licence or challenge the relevant rights.
One of the most frequent deal-killers in early-stage VC funding is loose or undocumented IP ownership. Investors will scrutinise your data to confirm that:
An IP portfolio should support the current business model and anticipated sources of value. A concise mapping can connect each material product, service, market and brand to the relevant patents, designs, trade marks, copyright, trade secrets and contractual rights. It should also identify obsolete rights, protection gaps and the plan for addressing them.
Before opening your data room to venture capitalists or private equity funds, use the following checklist to reduce avoidable questions and identify issues while there is still time to address them:
Strong IP will not rescue a weak business model, but a well-managed portfolio can make the investment case easier to verify, reduce diligence friction and preserve strategic options as the company grows.
If you are preparing for a Seed, Series A, or Private Equity growth round, early IP planning can accelerate your deal. Contact our Consulting team today to schedule a comprehensive portfolio review and ensure your business is fully prepared for investor due diligence.
A registered design is a right to prevent others making, selling or otherwise dealing in products made to a design which has been registered. It is not necessary to show the design has been copied and the right may be enforced against someone who has independently developed the same design.
Any new three-dimensional (3D) product, including parts of a larger product; and two-dimensional designs, including graphic designs, computer icons and typographic type-faces may be the subject of a registration. The protection is for the appearance of the whole or part of the product, including, shape, configuration, colour, pattern and ornamentation.
There is very little in the way of designs that cannot be protected. In fact, registered designs can be used to protect articles ranging from entire buildings to pen lids; logos; patterns; colour schemes and surface finishes; typefaces; and graphical user interfaces.
In order to be registered, your design must:
Both these criteria are judged with reference to designs which have been made available to the public before the effective filing date of the application.
For a design to be novel it must differ from earlier designs by more than immaterial details.
For a design to possess individual character, it must produce a different overall impression on the informed user compared to earlier designs. In many cases, the informed user is likely to be the end user of the product.
If granted, a registration can last 25 years from the filing date of the application, but to do so it must be renewed (through payment of a fee) at five-yearly intervals.
Design rights can be granted relatively quickly, are inexpensive and can offer another layer of protection for your invention not offered by other intellectual property (IP) rights.
Once you have obtained a registered design there is no requirement to show deliberate infringement, and so these rights can act as a cost-effective deterrent to potential infringers.
An application for a registered designs should always be filed before the design is publicly disclosed; otherwise this can preclude the opportunity to seek registered design protection. However, under certain circumstances, a 12 month self-disclosure grace period exists in the UK and Europe, which means that a prior self-disclosure of a design can be disregarded.
However, such disclosures may prevent registering the design in foreign countries, especially outside the European Union, as many countries in the world do not allow such a grace period, or allow a shorter period.
This provision does not exclude disclosures made independently of the designer during this period, and therefore applications should be filed before the design is disclosed if possible.
Once again, a registered design does not give the owner the right to use that design as it may infringe a third parties’ IP rights. Accordingly, it is useful to conduct a freedom to operate search in order to identify any potential risks.
Mathys & Squire has unrivalled expertise in patents, trade marks, design protection and litigation with offices in London, Birmingham, Cambridge, Manchester, Newcastle, Oxford, Luxembourg, Munich and Paris, as well as teams based in China and Japan. Our attorneys (both training and qualified) have a mix of scientific degrees extending from chemistry, biochemistry, pharmacology, genetics, microbiology, plant sciences and zoology through to physics, electronics, telecommunications and engineering. We are passionate about creating and delivering innovative, high-quality, client-focused services and building close and longstanding relationships with clients in order to establish defensive and offensive IP portfolios that generate commercial value.
A trade mark is a sign that distinguishes your goods or services from those of everyone else. It is also referred to as a “badge of origin”: when a customer sees the mark, they know where the product or services come from and who stands behind it. Under section 1(1) of the Trade Marks Act 1994, a trade mark can be any sign capable of being represented in a way that lets the registry and the public determine its clear and precise subject matter.
Registered and unregistered rights are different things. A registered trade mark is a property right granted by a registry, giving you a monopoly in the mark for the goods and services covered. An unregistered mark may still attract protection in certain jurisdictions. For example in the UK, this is through the law of passing off, but only where you can prove goodwill.
A UK trade mark registration lasts ten years from the filing date and can be renewed indefinitely in ten-year cycles.
Collective marks are owned by an association and used by its members.
Certification marks indicate that goods meet a defined standard, and are used by trade bodies and quality schemes. The owner of the Certification mark cannot trade in the goods/services it is certifying
Registration converts a sign used in trade, or intended to be used in trade into a legal asset. Concretely, it gives you:
The best moments to file are:
Objections fall into two families.
The descriptiveness, distinctiveness and customary objections can sometimes be overcome by evidence of acquired distinctiveness – proof that, through use, the public has come to see the sign as indicating you prior to the date of application. This can be expensive to assemble and never guaranteed – significant exposure and recognition will need to be evidenced.
Identical or similar marks already registered or applied for, for identical or similar goods, where there is a likelihood of confusion – plus other grounds such as earlier marks with a reputation, earlier unregistered rights or copyright . In the UK, the IPO does not refuse on relative grounds of its own motion; it notifies the earlier owners and leaves them to oppose (unlike other jurisdictions like the USA). So a clean examination report does not mean a clean route to registration.
Search – a full clearance covers the registers in each market – identical and similar marks, pending applications as well as registrations, in your own classes and in the neighbouring ones – and looks for marks that are close in sound, appearance or meaning rather than only exact matches. It can then go wider than the register, to company names, domains, social media handles, app store listings and general trading use, because unregistered rights can block you and can be asserted against you in common law jurisdictions such as the UK.
Sort out ownership of the artwork – If a freelancer or agency designed your logo, copyright in it belongs to them unless it has been assigned to you in writing. Get the written assignment before you file.
Draft the specification clearly – Before filing a UK trade mark application, it is necessary to specify the goods and services for which the mark will be used. These are categorised under the Nice Classification comprising 45 classes (1–34 for goods and 35–45 for services). Once an application is filed, the scope of protection cannot be extended to additional classes without submitting a new application, so it is important to consider the business strategy carefully at this stage to ensure adequate coverage
Trade mark rights are territorial, and it is important to consider the following questions:
National filings go directly to each country’s registry. They give you the most control, local specification practice from the outset, and no dependency on any other right.
Regional filings cover a bloc through one right. The EU trade mark is the main example: one application, unitary effect across all member states, priced against filing nationally. The trade-offs are real, though – a single earlier right in one member state can defeat the whole application meaning conversion into National applications at cost, and you must be able to show genuine use in a sufficient part of the EU to maintain it if challenged.
The Madrid Protocol lets you file one international application through WIPO, based on a home application or registration, designating any number of member territories. Its strengths: one application, one language, one fee payment, and simpler central management of renewals and recordals across a large portfolio. Its limits are worth knowing before committing:
A typical sensible strategy: file the UK (or your home) application first, then within the six-month priority window use Madrid for the bulk of your target markets, with direct national filings for the countries outside the system and for any market important enough to justify bespoke local drafting.
Docket and diary. Renewals every ten years. Non-use vulnerability dates five years from registration. Priority and opposition deadlines. Missed renewals are entirely avoidable and entirely unforgiving.
Use the mark and keep proof. Marks become vulnerable to revocation for non-use after five years, and the burden of proving use falls on you. Maintain a dated evidence file – invoices, sales figures by territory, advertising spend, packaging, dated website captures, catalogues. One UK-specific point: since 1 January 2026, use in the EU no longer counts toward genuine use of, or reputation in, a UK “cloned” registration derived from an EU mark at Brexit. Cloned marks with no UK use in the preceding five years are now exposed.
Carrying out watches: Especially in your key territories. Flagging new applications close to your mark so you can oppose within the deadline. Watches extend beyond trade mark registers, such as:
Enforcement: Either through cease and desists, Registry proceedings (opposition, invalidation, revocation), Company Name Tribunal Complaints, Domain Complaints and platform takedowns, to court action in the Intellectual Property Enterprise Court or High Court, in the UK. Remedies include injunctions, damages or an account of profits, delivery up and destruction. In some instances, coexistence or settlement agreements can be a commercially better outcome than initiating litigation.
Commercialise. Licences, franchising, distribution agreements, assignments, and security over the marks. Record what should be recorded. Audit the portfolio annually against the actual product range, review what you no longer use, and file afresh as the brand evolves to ensure consistent protection.
Passing off protects unregistered goodwill in the UK. The classic test requires three elements: goodwill or reputation attached to your goods or services in the mind of the public; a misrepresentation by the defendant likely to lead the public to believe their goods or services are yours; and damage (actual or likely). Each element must be evidenced – typically through sales data, marketing spend, press coverage, and sometimes survey or witness evidence. Compared with bringing action based on a registration, it is slower, less certain, and considerably more expensive. Goodwill is also often local, so a strong reputation in one region may not support a claim against use in another. A registered right gives you a National reach.
Alongside passing off, you may have copyright in a logo as an artistic work, unregistered design rights in product appearance, and rights under consumer protection or advertising rules. Useful, but none is a substitute for obtaining registered protection.
If you are trading on an unregistered mark, the sensible course is to file as soon as possible as this gives you the strongest protection, which is simpler to enforce.
