The Importance of Patents in the Fight Against Counterfeiting

Chris Eastell, Head of Intellectual Property, De La Rue 

Patents underpin innovation and unlock many security advantages you may not have previously considered. Read this article to find out more about the important role that patents play and the benefits they give you.

What do the following security features, developed over the last 50 years, have in common?

•    Windowed Thread
•    Cleartext®
•    STARCHROME®
•    GEMINI™ and Enhanced GEMINI™
•    IGNITE®
•    KINETIC STARCHROME®
•    PUREIMAGE™
•    SPOTLIGHT™

The answer is that they have all been the subject of patents.

Intellectual Property, and in particular patents, would not be in many people’s top 10 list of how best to stay ahead of the counterfeiter but they are one of the key fundamental building blocks of any innovation cycle.

What is a patent?

A patent is one type of intellectual property. Unlike the other types of intellectual property such as copyright, designs and trademarks it is focused on technical matters and protects the way something is made or works. Patents are often seen as complex documents which are difficult to understand but in simple terms, they are an agreement between an inventor and the government of a country, in which the inventor agrees to publish his or her invention, and in return the government agrees to give the inventor exclusivity on the use of the invention for a limited time. To get granted this exclusivity the technical idea behind the patent must be new and must not have been disclosed to the public anywhere in the world. The idea must also be inventive and not just a simple modification of a known idea.

Why Do Companies File Patents?

Through the granting of a limited monopoly period the patent system rewards companies who invest in R&D and strive to create new products and processes. Once a company has a patent protecting its technology it has control over how that technology is exploited in the market. The granted monopoly allows companies to stop competitors from making/selling/using their protected technology. Alternatively, the company can grant licenses to allow its competitors to use the technology in exchange for a license fee. Ultimately patents are valuable commercial assets which protect a company’s investment in innovation and increase their competitive advantage.

What is the benefit to you?

Put simply patents underpin innovation and this is particularly the case in the Banknote and Secure Document Authentication Industry. Central banks, and other end users of secure documents, quite rightly want a continuous improvement in new and improved security features to ensure public confidence. This is achieved when companies have confidence to invest in R&D and patents provide the foundation for this confidence. From the customers point of view patents enable maximisation (not constriction) of exploitation of innovation and opens up opportunities through licensing and know-how transfer and importantly places know-how in public domain for general use after the patents expire.

Patents provide mechanisms where state-of-the-art technology can be made available to smaller issuing authorities who cannot justify setting up their own R&D department. 

“The enforcement of patents controls inappropriate usage, e.g. use of technology outside the secure document industry which would be a potentially legitimate source of material for counterfeits.”

The flow chart illustrates the potential consequence of features with patent protection being eliminated from a banknote specification. On first appraisal this may appear to be a positive step as patents are often seen as being barriers to competition. However as can be seen from the graphic below the likely outcome is a significant reduction in research of security features and the widespread use of low value commodity features. Ultimately counterfeits will increase, and the security of the national currency will be compromised.

"De La Rue has 400 pending patent applications and 1050 granted patents across 40 countries."

De La Rue Patented Features

De La Rue is focused on developing new security features for all its customer and this commitment to innovation is recognized through its extensive patent portfolio. De La Rue has 400 pending patent applications and 1050 granted patents across 40 countries. De La Rue’s patent portfolio protects 150 separate inventions across 17 technology areas protecting both the current suite of products and the next generation of security features.

Two key technology areas dominate De La Rue’s patent portfolio, namely Holography and Micro-optics.

In the field of Holography De La Rue focusses on direct write lithography (an advanced type of digital “hologram” enabling precise control of the grating structure) and a highly evolved form of Benton (H1-H2) holography (“classical” holography). De La Rue have been filing patent applications in the field of “classical” holography since the 1980’s and this has continued more recently with the invention of security features combining both “classical” and direct write origination methods. Direct write “holography,” through precise control of grating structure, creates strong, interactive and engaging kinetic effects as well as complex image switches and De La Rue has applied for multiple patent application in this area. This includes patents protects the fundamental characteristics of the digital pixels and those more focussed on the striking public effects such as Spotlight™ and PureImage™. De La Rue’s patent applications protecting their direct write holographic technology will ensure protection of this key technology area for all stakeholders until the late 2030’s.

It is important to note that patents protect the technology that underpins a physical product, and it is very common that there are multiple patents protecting one security feature. De La Rue’s KINETIC STARCHROME® is a perfect example of this.  KINETIC STARCHROME® is a security thread combining colourshift with holographic imagery and a typical example will have at least three patents protecting it. Two of the patents protect the different types of interaction between the holographic effects and the colourshift and then separate patents protect the specific technology behind the colourshift or holographic structures. 

The use of micro-optic technology in security features has grown rapidly in the last five years. The term micro-optics is used to classify optical structures operating under the physical principles of refraction or reflection rather than diffraction. The most commonly used structures in security devices are micro-lenses, prisms and mirrors and it is clear from the number of patent applications published that this is an area of growth across the security document industry.

De La Rue has an extensive patent portfolio in all areas of micro-optics whether it is in the use of prismatic arrays for its IGNITE® thread or the use of micro-lenses in the NEXUS™ embedded stripe or the integration of micro-optics into SAFEGUARD®. IGNITE® combines prismatic arrays with colourshift coatings and the first patent application filed by De La Rue to protect this combination was in November 2007. The development of a security feature can take place over many years and subsequent patent applications on new variants of IGNITE® were filed as recently as 2019 extending the patent protection until 2039.

In summary De La Rue’s strong track record in innovation across many secure document applications  is underpinned by a strong patent portfolio. This provides protection for all De La Rue stakeholders over the next two decades and allows De La Rue to invest in confidence in its future R&D projects creating new and striking security features for all its customers. 

For more information email currency@delarue.com