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.

Why IP matters to investors

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:

1. Exclusivity & margin protection: Can competitors easily copy your core offering, erode your pricing power, and trigger a race-to-the-bottom price war?
2. Ownership and control: Does the business undeniably own, or have sufficiently broad and durable rights to use, its technical architecture, brand assets, and proprietary processes? Are there assignments, licences, security interests or disputes that could restrict those rights?
3. Investment and exit risk: When a strategic acquirer conducts buy-side due diligence years from now, could defects in protection, ownership or freedom to operate lead to additional conditions, a valuation adjustment or difficulty completing a later exit?

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.

Auditing defensibility: how investors interrogate your IP

During formal due diligence, VC technical advisors and PE legal counsel will stress-test your asset portfolio across four distinct quadrants:

1. Proprietary protection
2. Freedom to operate
3. IP ownership & chain of title
4. Commercial alignment

Proprietary protection (patents, designs and trade secrets)

Investors assess whether the business has chosen appropriate forms of protection for the assets that matter:

• Patents and patent applications: Do the claims cover commercially important products or methods, in the countries that matter? Is the claimed scope likely to be valid, enforceable and difficult for competitors to work around?
• Registered designs and trade marks: Are important product appearances and brands protected in relevant markets, and does the filing strategy reflect how the business actually trades?
• Trade secrets: For proprietary code, algorithms, or manufacturing processes not publicly disclosed, are there appropriate access controls, non-disclosure agreements (NDAs), and information security protocols?

Freedom to operate

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.

IP ownership & clean chain of title

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:

• Founder, employee, consultant and development contracts contain appropriate IP provisions, with separate assignments executed where the applicable law or underlying contract requires them.
• Assignments and licences cover the relevant rights, territories and uses, and any necessary recordals have been completed.
• Software businesses maintain an accurate record of open-source and other third-party components and comply with the applicable licence terms. Copyleft software is not automatically incompatible with a proprietary product; the issue is whether the way it is used or distributed triggers obligations that conflict with the intended commercial model.
• Rights to third-party software, data, content and development tools are sufficiently broad for the business’s current use and planned growth.

Commercial alignment

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.

Essential checklist for founders preparing for VC due diligence

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:

• Audit IP ownership and licences. Review the employment, founder, consultancy, collaboration and development arrangements relevant to material IP. Put corrective assignments or licences in place where needed.
• Align the portfolio with the business plan. Identify the products, features, brands, markets and partnerships expected to create value, then test whether the existing portfolio supports them.
• Plan international filings. Use national, regional and, where appropriate, Patent Cooperation Treaty (PCT) applications to preserve filing options in commercially relevant territories.
• Document key IP risks and mitigation strategy. Consider both internal and external IP risks, and identify, prioritise, and document a strategy for removing or minimising the risks.
• Protect trade secrets. Maintain an internal trade secret register detailing confidential algorithms, customer lists, and processes, alongside strict role-based data access controls.
• Audit software, data and other third-party inputs. Record the applicable terms and resolve any restrictions that are inconsistent with the intended product or transaction.
• Prepare an investor-facing IP summary. In one or two pages, explain the material rights, ownership position, territories, commercial relevance, key licences and known risks. Include relevant freedom-to-operate work, disputes and remediation plans, while preserving privilege and confidentiality where appropriate.

Prepare your IP portfolio for investment

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.

What is a registered design?

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.

What can be protected by a registered 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.

What do I need to demonstrate to obtain a registered design?

In order to be registered, your design must:

• be novel; and
• possess individual character.

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.

How long can a registered design be maintained?

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.

Would a registered design be helpful for my business?

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.

What happens if I have already disclosed my design?

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.

What else should I consider?

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.

How can Mathys & Squire help?

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.

What is a Trade Mark?

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.

What can be protected by Trade Marks?

• Word marks – the name itself, in plain text, unconstrained by font or colour. Usually the single most valuable filing you will make.
• Logos and stylised marks – device marks, and words presented in a particular font, colour or arrangement.
• Slogans and taglines – registrable, but only where they function as an indicator of origin.
• Shapes – the three-dimensional shape of a product or its packaging.
• Colours and colour combinations – a single colour applied to particular goods, or a defined combination.
• Sounds – jingles and start-up chimes, represented by an audio file or musical notation.
• Motion, multimedia, hologram and pattern marks – recognised categories, filed with video or image files.
• Position marks – a sign applied to a specific part of a product.
• Trade dress and get-up – the overall look of packaging or a retail environment, protectable in parts through combinations of the above.

Specialist Categories:

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

Why register your Trade Mark and when should you file?

Registration converts a sign used in trade, or intended to be used in trade into a legal asset. Concretely, it gives you:

• A monopoly right in the mark for the goods and services registered, enforceable without necessarily having to prove reputation, confusion in fact, or damage.
• A deterrent. Your mark appears on searches run by competitors and their advisers, and on the watch services their attorneys operate.
• A basis for opposing others. Registered rights let you block later conflicting applications at low cost, often before the other party has invested in their brand.
• Access to fast enforcement channels. Marketplace takedown programmes, social platform brand portals and Border Force customs applications generally require a registration.
• A licensable and chargeable asset. Registered marks can be licensed, franchised, assigned, valued and given as security. Unregistered goodwill is much harder to transact with.

The best moments to file are:

• Before launch, and ideally before you commit to packaging print runs, signage, or a domain and handle strategy.
• Before you tell anyone. That includes pitch decks, trade shows, crowdfunding pages, press embargoes and job adverts. Public disclosure of a new brand is an invitation to a squatter in a first-to-file jurisdiction.
• Before you expand into a new territory or product category.
• Within six months of your first application, if you want to use the Paris Convention priority right to backdate corresponding foreign filings to your original date. This is one of the most useful and most commonly missed deadlines in trade mark practice.

What makes a good Trade Mark?

• Distinctive – capable of being read as a badge of origin: a coined, arbitrary or suggestive sign rather than one the trade would use to describe the product.
• Non-descriptive – it should not tell the customer what the goods are, what they do, where they come from or how good they are.  Marks on the more descriptive side are harder to register and weak from an enforcement perspective.
• Free to use – not blocked by earlier rights in your markets and available across channels including domain, handles, app store listing, social media.
• Linguistically safe – screened for unfortunate meanings and pronunciations in every language where you will trade.

What cannot be a Trade Mark?

Objections fall into two families.

Absolute grounds – concerning the mark itself

• Signs that are not capable of distinguishing, or cannot be clearly represented.
• Marks devoid of any distinctive character.
• Descriptive marks – indicating kind, quality, quantity, intended purpose, value, geographical origin or time of production.
• Customary or generic terms in the trade.
• Shape and characteristic exclusions – signs consisting exclusively of a shape resulting from the nature of the goods, a shape necessary to achieve a technical result, or a shape giving substantial value to the goods.
• Marks contrary to public policy or accepted principles of morality.
• Deceptive marks, likely to mislead the public as to nature, quality or origin.
• Specially protected emblems – national flags, the Royal arms and insignia, the Olympic symbols, the Red Cross emblem, and similar.
• Marks whose use is prohibited by other law, and protected geographical indications and plant variety denominations.
• Bad faith applications.

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.

Relative grounds – concerning earlier rights

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.

What should you do before registering a Trade Mark?

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

Where should you register?

Trade mark rights are territorial, and it is important to consider the following questions:

• Where you sell today, including online sales that target customers in a territory.
• Where you will sell in the next three to five years.
• Where you manufacture or have goods made, so you can stop counterfeit production and intercept goods in transit.
• The marketplaces you depend on – platform enforcement programmes are territorially keyed to registrations.

International vs national registrations

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:

• Central attack. For the first five years, the international registration depends on the base mark. If the base application fails, or is partially or fully cancelled, every designation it is affected in the same way – again it can be “transformed” into national applications, but this will incur cost.
• Examination is still national. Each designated office applies its own law. A refusal or opposition in any territory needs a local agent, and those costs are not in the Madrid fee estimate.
• Specification practice varies. A specification that sails through the UK may be objected to as too broad in one country and too vague in another. The US in particular requires narrow descriptions plus a declaration of use or intent to use, and eventually specimens of actual use.

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.

What should you do once Trade Mark protection is obtained?

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:

• Company name watches,
• Domain watches
• Online and marketplace monitoring – listings, sellers, keyword advertising, app stores, social handles and, increasingly, AI-generated storefronts. 
• Customs watches. An Application for Action lodged with UK Border Force (and the EU equivalent) lets customs detain suspected counterfeits at the border. It is inexpensive and one of the highest-leverage tools available.

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.

What if you are using and do not have registered 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.

Why should you engage a Trade Mark attorney?

• Clearance judgement. A search report is data. Deciding whether a hit is a real obstacle, a negotiable one, or noise – and whether an earlier registration is vulnerable – takes experience of how registries and tribunals actually decide.  A Trade Mark attorney will be able to review a search and identified marks and give a view on the practical legal and commercial risks.
• Specification drafting. Too narrow leaves gaps; too broad now carries a bad faith risk. Getting this right at filing avoids re-filing at a later date and a worse priority position.
• Prosecution and objections. Responding to distinctiveness objections, assembling acquired distinctiveness evidence, and negotiating limitations are specialist tasks with poor DIY success rates.
• Contentious work. Oppositions, invalidations and revocations are conducted before the tribunal, on strict deadlines, with costs consequences.  Experience in handling these cases can be the difference between success and failure.
• International coordination. A network of trusted foreign associates, a coherent filing programme, and a single point of accountability for deadlines across dozens of territories.
• Docketing. Renewals, use deadlines and watch notices tracked systematically rather than in a spreadsheet someone stopped updating.
• Experience.  An attorney will help you navigate all areas of protecting and enforcing your brand with their wealth of experience, and help you not to make mistakes which could cause irreparable damage to your business.

What is a patent?

A patent is a national monopoly right, which can be used to prevent third parties making, using, importing or selling an invention in a particular territory (for example the UK) and allows the owner to seek compensation for damage caused by any third parties who infringe the granted patent.

What do I need to demonstrate to obtain a granted patent?

In most jurisdictions, to be patentable an invention must be:

• novel (it should not have been publicly disclosed by anyone, for instance, orally, in writing, by use, or otherwise);
• inventive (it should not be obvious in view of what is already known in that field); and
• not belong to an excluded category.

Excluded categories include ideas of an abstract nature, for example in the UK, excluded categories include pure methods of doing business; scientific or mathematical discoveries, theories and methods; literary, dramatic, musical or artistic works; schemes, rules or methods for performing a mental act or playing a game; and methods of medical treatment.

How long can a granted patent be maintained?

A granted patent can remain in force for up to 20 years from the filing date of the application.

How can a patent help my business?

As discussed above, a granted patent can be used to prevent third parties from exploiting an invention, and so these intellectual property rights can be essential in maintaining market share. Patents can also be licensed, assigned, or used as security for a loan. They can thus be a valuable commercial asset, for example patents can provide licensing revenue from markets which a business is not able to exploit itself; be used in cross licensing deals if competitors hold patents covering useful technology; and give investors confidence that an enterprise owns and can defend the technology upon which its business depends.

What type of inventions can be protected using patents?

Patents generally cover products and processes that contain new technical aspects and so are applicable to businesses across a wide range of fields. As an example, the figures below illustrate patent applications filed worldwide between 2006 and 2024 in the fields of a) food and beverages, b) medical devices c) cosmetics and d) renewable energy.

a)

b)

c)

d)

Approximately 2.3 million patent families were filed between 2006 and 2024 relating to food and beverage inventions and 3.6 million relating to all aspects of medical devices. Accordingly, many companies worldwide rely on patents to protect their innovations.

Can I just rely on trade secrets?

Whether you protect your invention using patents or trade secrets is often determined by the nature of the invention itself and the number of competitors in a particular field. Patents require public disclosure, but provide a robust form of protection for up to 20 years for inventions which could be reverse engineered. In contrast, trade secrets provide protection indefinitely, as long as the information remains confidential, but do not provide protection against reverse engineering or independent development of the same invention.

Accordingly, in cases where it may be possible to determine the composition of a product or how a product was formed by simply analysing the product, trade secrets may not be considered a suitable form of protection. A further consideration is the number of competitors which may be looking to develop similar products or are working towards producing solutions to the same challenges as the likelihood of another company independently developing the same or a similar invention will be higher.

What other things do I need to consider?

Confidentiality

Any public disclosure of an invention before the filing of a patent application is highly prejudicial to the chances of obtaining valid patent protection in most jurisdictions. If you do need to discuss your invention with someone other than a patent attorney before a patent application has been filed then you can use a non-disclosure agreement (NDA) to provide some confidentiality, but filing a patent application first is a far better option.

Preliminary Searches

Your invention may not be new, and if so, it is best to find this out quickly. Preliminary searching can be done at an early stage in the development of your invention. In the event a preliminary search indicates that your invention may not be considered novel or inventive in view of earlier disclosures, knowing this at an early stage can prevent you investing in the research and development of a product or process which may not be patentable. However, being aware of such issues at an early stages can allow you to alter the development of your invention in a way which would be considered suitable for patent protection.

Freedom to Operate searches

A patent does not give the owner the right to put the invention into practice as the invention may infringe someone else’s patent. A freedom to operate search can assist you in understanding whether any third parties own a granted patent or pending application which could prevent you from making, using, importing or selling your invention in a particular territory.

How can Mathys & Squire help?

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.

Head of Trade Marks Claire Breheny and Partner Laura Clews provide a comprehensive guide to patents, trade marks and designs, answering some of the most frequently asked questions and offering practical insight into these key areas of intellectual property. Each article explores the fundamental principles of IP, helping businesses and individuals to better understand how these rights can protect their innovations.

Click on a service below to find out more.

The aerospace and defence sectors are developing rapidly as shifting geopolitics increase the volume of defence capabilities and investment in new technology worldwide, including in autonomous aviation. One company that has emerged as a leader in this industry is our client, Certo Aerospace.

Founded in 2008, Certo Aerospace are a British company that pride themselves on their UK-owned technology, including their unmanned vertical take-off and landing (VTOL) aircraft systems. At the centre of their innovation is the Capstone VTOL UAV, a coaxial helicopter with a steel airframe and powered by internal combustion, but which is uncrewed and operable from a distance, meaning it bridges the ‘capability gap’ that currently exists between drones and manned helicopters. In comparison to an equivalent crewed helicopter, it boasts a 90% reduction in fuel consumption and costs, as well as 75% reduction in personnel requirements and a 70% reduction in maintenance hours, making Certo a strategic choice.

They operate with the intention to fulfil both military and commercial functions. For defence, their unmanned systems offer solutions that are cost effective and reduce risks to war fighters across a range of mission types, including those in hostile or remote environments. From a commercial perspective, their aircraft is also suitable for various construction, disaster relief, firefighting, and medical evacuation missions (see below).

Certo Aerospace has had recent success earlier this year as they were able to show their ASW DETECT, LOCATE & TRACK capabilities to the Royal Navy. They successfully demonstrated their real-time submarine tracking and use of sonobuoys at Keevil Airfield to further prove the reliability of the CAPSTONE.

Certo Aerospace is also UK veteran-led, with Justin Tooth (CEO) combining his own background as a Former Royal Navy Lynx pilot with his C-Suite experience to help lead the company. He writes, ‘Certo Aerospace is first and foremost a developer of Intellectual Property. We are also working in the fastest developing segment of defence and aerospace: drones. So having a truly specialist and dynamic IP team like M&S on board has been mission-critical.’

From being featured in BBC West, to being a recipient of funding from the Pentagon and formalising a contract with the UK Defence Ministry, Certo Aerospace is growing rapidly and therefore has required a full proof IP strategy to shield themselves against competitors. At Mathys & Squire, we are delighted to work with Certo Aerospace to help secure their assets as they continue to develop their technology.

Find out more about Certo Aerospace on their website here.

Watch Justin Tooth in our latest episode of Innovation Unlocked.

Recent decisions of the Enlarged Board of Appeal, G 1/24 and G 1/25, together with other recent Board of Appeal decisions, contain a number of important observations regarding claim interpretation before the European Patent Office. When read together, these decisions emphasise several established principles concerning the relationship between the claims, the description and the skilled person’s understanding of the patent.

These principles are not merely academic. They influence how claims are assessed for novelty and inventive step, how patentees defend granted claims in opposition and appeal proceedings, and how applications should be drafted and prosecuted in the first place. Understanding the emerging approach to claim interpretation is therefore critical for both applicants and third parties.

The following six principles can be distilled from the case law.

1. The claims are the starting point, basis and decisive reference point

In G 1/24, the Enlarged Board confirmed that “the claims are the starting point and the basis for assessing the patentability of an invention“. Subsequent decisions have emphasised that the claims are the decisive reference point for claim interpretation.

The central question is what a skilled person would objectively understand the claim language to mean. The wording chosen by the patentee is therefore the primary source of claim meaning.

2. Broad claim language receives its broadest technically sensible meaning

A longstanding principle of EPO case law is that non-specific claim language is given its broadest technically sensible meaning.

As summarised in the Case Law of the Boards of Appeal (I.C.4.1):

“It is a well-established principle laid down by the boards’ case law that a non-specific definition in a claim should be given its broadest technically sensible meaning (see T 79/96, T 596/96). For a feature defined in a negative manner, which excludes the presence of a specific element, the broadest scope of the claim corresponds to the narrowest (i.e. most limited) technically sensible definition of the element to be excluded (T 1553/19).”

The consequence is that general claim language cannot ordinarily be confined to a narrower scope merely because a narrower interpretation would better reflect a preferred embodiment, align with the invention described in the specification, or improve the patent’s prospects of validity. Unless the claim wording itself provides a basis for a limitation, the claim is generally assessed across its full technically sensible scope.

This principle was reaffirmed in T 2027/23, where the Board reiterated:

“the board finds no authority for interpreting a claim more narrowly than the wording of the claim as understood by the person skilled in the art would allow.”

For opponents, this often provides a powerful response to attempts to read additional technical restrictions into broad claim language. For patentees, it highlights the importance of ensuring that any genuinely important limitation appears in the claims themselves.

3. Claims are construed objectively by a skilled person with a mind willing to understand

The phrase “a mind willing to understand” frequently appears in EPO case law, but it is sometimes misunderstood.

In T 10/22, the Board explained that the principle simply means that:

“the skilled person when considering a claim should rule out interpretations which are illogical or which do not make technical sense”.

This does not mean that a claim should be interpreted according to what would be most convenient for the patentee.

On the contrary, the Board explained that the deciding body should take into account:

“all technically meaningful interpretations of this claim … that would objectively occur to a skilled reader“.

The relevant perspective is therefore:

“a mind willing to objectively construe a claim“,

not:

“a mind willing to understand the applicant’s or patent proprietor’s alleged intention“.

Claim construction is an objective exercise focused on the understanding of the skilled person rather than the subjective intentions of the drafter.

4. The description and drawings must always be consulted

One of the questions addressed by G 1/24 was whether the description and drawings should always be considered when interpreting a claim. The Enlarged Board answered that question in the affirmative.

G 1/25 clarified the nature of that exercise. The Enlarged Board in that decision explained that references to interpreting claims “in the light of” or “by consulting” the description and drawings do not describe different legal tests or different stages of interpretation. Rather, they describe: “the same interpretative operation: determining the meaning of the claim wording from the perspective of the skilled person based on the claims, the description and any drawings taken together.“

This emphasises that claim construction is not a two-stage exercise in which the claims are first interpreted in isolation and then corrected by reference to the description. It is a single interpretative process conducted from the perspective of a skilled person reading the patent as a whole.

5. Consultation of the description may affect claim meaning, but cannot impose unsupported limitations

The requirement to consult the description and drawings is substantive rather than merely formal. As recognised in G 1/25, the description may affect the meaning which the skilled person attributes to the claim wording. Where the patent contains an express definition of a term or a clear contextual explanation, the skilled person will ordinarily take that into account when interpreting the claim.

At the same time, the description cannot be used to impose a limitation or expansion for which the claim wording provides no basis. As the Enlarged Board stated:

“The description and drawings may affect the meaning which the skilled person attributes to the claim wording, but they cannot be used to impose on the claim a limitation or expansion for which the claim wording provides no basis.”

The key question therefore remains whether the interpretation advanced can reasonably be derived from the language of the claim itself. The description may influence the skilled person’s understanding of that language, but it cannot supply limitations that find no basis in the claim wording.

6. If a narrower scope is required, the proper remedy is amendment

The final principle follows naturally from the preceding five.

Where the patentee wishes to rely upon technical limitations that are not reflected in the claim language, the solution is amendment rather than interpretation.

In G 1/24, the Enlarged Board stated unequivocally:

“The correct response to any unclarity in a claim is amendment.”

Similarly, T 2027/23 identified as a major takeaway from G 1/24 that “it is up to a patentee to remedy discrepancies between the description and the claims“, stating that “patentees are the masters of their fate.”

In short, where narrower protection is required, amendment rather than interpretation is the appropriate mechanism.

Practical Consequences

Taken together, G 1/24, G 1/25, and the subsequent Board of Appeal decisions have important practical implications for applicants and patentees.

First, broad claim language will be assessed across its full technically sensible scope.

Second, the decisions reinforce the importance of precise claim drafting. If a particular technical feature is essential to patentability, it should generally appear in the claims rather than being left to implication from the description.

Third, the description remains critically important. While it cannot be used to import limitations unsupported by the claim wording, it helps inform the skilled person’s understanding of claim language and may provide definitions that influence how claim terms are interpreted. It also provides the basis for future amendment should broader claims later prove vulnerable.

The practical lesson for applicants is therefore straightforward. Claim drafting proceeds on the assumption that the claims will be interpreted according to their broadest technically sensible meaning. Patentability will be assessed against that full scope. At the same time, the specification should be drafted with sufficient detail, clear terminology and appropriate fallback positions to support both claim interpretation and future amendment if required.

The claims are the primary determinant of scope, but their meaning is determined from the perspective of the skilled person reading the claims, description and drawings together. The description informs, and may in some cases define, the meaning of claim terms; it does not override the claim language or supply limitations for which the claims provide no basis. Where narrower protection is required, the appropriate remedy is amendment, not interpretative rewriting.

For growing innovative businesses, expanding into international markets is an exciting development which invites intellectual property considerations. Securing patent protection across multiple jurisdictions is vital to safeguard a competitive edge, but attempting to file individual patent applications in every target country at the same time can quickly overwhelm working capital and administrative resources.

This is where the Patent Cooperation Treaty (PCT) becomes one of the most powerful tools within a company’s IP strategy. Here we break down what a PCT patent application is, how the process works, and why making use of this framework can give your business a commercial advantage.

What is a PCT application?

A common misconception is that a PCT application results in a single, overarching “international patent” that automatically protects an invention worldwide. In reality, no single application can grant global patent rights. Patent rights remain strictly territorial and must ultimately be granted by national or regional patent offices (such as the UK Intellectual Property Office, the European Patent Office, or the US Patent and Trademark Office).

Instead, the Patent Cooperation Treaty – administered by the World Intellectual Property Organization (WIPO) – is a single procedure for filing a patent application which can ultimately be applied to any of its 150+ contracting states. Filing a Patent Cooperation Treaty application acts as a unified “placeholder.” By submitting one international application in a single language at one ‘receiving Office’, you can effectively preserve a filing date across more than 150 countries at once at a significantly reduced cost.

Almost all major economies are contracting states of the PCT. For territories which are not PCT contracting states (such as Taiwan and Argentina), patent protection can only be achieved under the Paris Convention by filing national applications and paying the requisite fees within 12 months of a domestic priority application.

How does the Patent Cooperation Treaty process work?

The PCT application process is divided into two distinct phases: the International Phase and the National (or Regional) Phase.

Phase 1: The International Phase

The International Phase begins with filing a PCT application, typically within 12 months of filing a domestic priority application. The International Phase comprises four main stages:

• Filing (‘Chapter I’): Submit a single Patent Cooperation Treaty application in one language at an eligible receiving Office (such as the European Patent Office), paying a single set of initial fees.
• International search & written opinion: An International Searching Authority (ISA), such as the European Patent Office, conducts a comprehensive prior art search to assess whether the invention is novel and involves an inventive step. An International Search Report (ISR) is issued, listing the prior art documents that the ISA considers relevant, along with a non-binding preliminary written opinion on patentability (the ‘WO-ISA’).
• International publication: Shortly after 18 months from the initial priority application filing, WIPO publishes the PCT application, making the technical details of the invention public.
• Optional preliminary examination (‘Chapter II’): An optional examination stage can be requested, providing an opportunity to address any negative findings in the WO-ISA and receive an updated written opinion before entering the National Phase.

Phase 2: National (or Regional) Phase

At 30 or 31 months from the initial priority date (depending on the target jurisdiction), the application transitions into the National Phase. At this point, you decide which countries or regions you wish to pursue patent protection in and pay the requisite national entry fees. Your application is then evaluated by each selected national or regional patent office under their respective patent laws.

Why should you consider using the PCT route?

Choosing the PCT patent application path offers several commercial and strategic benefits for growing companies, venture-backed startups, and multinational enterprises.

It can give you financial breathing room

Without the PCT, a business wishing to protect an invention internationally under the Paris Convention must file all individual national applications within 12 months of the initial priority filing. This requires paying substantial foreign filing fees, official search fees, and local attorney representation fees in multiple countries all at once.

The PCT extends this window from 12 months to 30 or 31 months. This extra 18+ months allows your business to:

• Evaluate commercial traction and market potential in key territories.
• Secure investment or licensing partners to fund foreign IP filing costs.
• Refine the commercial implementation of the product before committing significant capital.

You’ll receive an early risk assessment

Receiving the International Search Report (ISR) and Written Opinion (WO-ISA) during the PCT International Phase provides an early, high-quality assessment of the patentability of your invention. The ISR and WO-ISA is often later taken into account by national and regional patent offices during examination. If the ISR and WO-ISA identifies relevant prior art, this provides an opportunity to adapt strategy, modify claims, or decide not to proceed into costly national filings at all, potentially saving significant sums in foreign prosecution costs.

You can build investor confidence

A pending PCT patent application can be attractive to prospective investors, licensees, and commercial partners during early-stage negotiations, by showing that your IP assets are in the process of being secured internationally. A pending PCT application also allows you to mark your products or marketing materials as “Patent Pending” across PCT contracting states in the same way as a national patent application.

What PCT patent fees are involved in the process?

Budgeting for international patent protection requires understanding how PCT patent fees are structured across the timeline.

While filing a PCT application adds an initial layer of administrative fees, it defers the significantly larger expenses associated with national filings (such as translation costs and foreign attorney fees). An illustration of the administrative fees is set out below.

Maximise your international IP strategy

If you are planning to launch an innovative product or technology in international markets, early strategic planning is critical. Contact us today to discuss how choosing the Patent Cooperation Treaty route can support your global business objectives.

Partner Edd Cavanna has been featured in The Banker, a Financial Times publication, The Daily Telegraph, Fintech Finance News, Financial IT and Finextra, discussing the increase in patent filings for quantum-resistant and post-quantum cryptography technology.

His commentary highlights how hackers may be able to use quantum computing to gain access to banks’ datasets, a big concern for consumers’ safety, and patenting preventative technology could give banks a significant competitive edge.

Read the extended press release below

• Quantum computers could easily crack consumers’ banking passwords
• 120 patents aimed at protecting cryptocurrencies from quantum computing attacks, up 20% from 100 the previous year
• Quantum computers could be commercially available in the coming years

Banks and tech companies filed 1,455 patents for technology to prevent hackers from using quantum computing to intercept consumer’s bank transactions and steal their passwords in the year to 31 March 2026, shows new research by leading intellectual property law firm Mathys & Squire*.

It is expected that quantum computers will be able to crack many consumers’ banking passwords, as they perform exponentially faster than today’s computers. Quantum computers will be able perform tasks in hours that would take today’s most powerful computers thousands of years**.

Some experts believe quantum computers could be commercially available within the coming years, potentially enabling hackers to break into consumers’ bank accounts and cryptocurrency wallets.

Bank of America (47 patents), Wells Fargo (44), JP Morgan (12) and Mastercard (9) are among the top patent filers of ‘quantum-resistant’ or ‘post-quantum’ cryptography technology. Many of the technologies filed are designed to prevent hackers from intercepting consumers’ transactions and stealing their personal data.

Edd Cavanna, Partner at Mathys & Squire, says: “The looming threat of quantum computing is fuelling a race to develop and patent technologies that can protect consumers.”

“Developing quantum resistant technologies could give banks a significant edge over competitors. Quantum computing could make most of today’s security systems obsolete, and no real alternative has been found yet.”

“If robust security systems aren’t developed before quantum computers are rolled out, consumers’ savings would be exposed to criminals who could simply break into their bank accounts and take their money out.”

“This is not a remote risk. Some of the world’s largest banks and financial institutions are now involved in finding solutions.”

Edd Cavanna says cryptocurrencies are particularly vulnerable as they are built on traditional encryption methods that might not resist a quantum computing attack.

In the year to March 2026, 116 patents were filed for patents relating to protecting cryptocurrencies against quantum attacks, up 20% from 97 the previous year.

Examples of the ‘quantum-resistant’ technologies patented last year include:

• A system that creates unique, randomised passwords for each financial transaction to be approved, reducing the risk of them being intercepted
• A smart bank card that can update its own security software, allowing it to use better post-quantum technology as it becomes available
• A centralised system allowing individual cryptocurrency holders to add multiple, changing layers of encryption to their crypto wallets
• A system that uses AI to create different versions of people fingerprints for them to authorise transactions

* The research considers patent applications published between 1 April 2025 and 31 March 2026

** IBM article (02/04/26): What is quantum computing?

Partners Nicholas Fox and Dylan Morgan have been featured in ‘Biggest UK and EU Patent Developments of 2026 So Far’ in Law360.

In the article, Nicholas Fox comments on the Supreme Court’s ruling in Emotional Perception, discussing the monumental impact of the ruling on case law and whether this impact will be reflected in upcoming legal decisions regarding the patentability of AI and software.

Dylan Morgan shares his insights on the Amazon v InterDigital case in the telecoms space, suggesting that we may be moving towards an outcome where licensors are able to bring separate actions in different courts, with one court rejecting orders determined by other courts.

Click to read the full article in Law360 here.