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IP from research at Lancaster Uni
Dr Gavin Smith Intellectual Property Development Manager Research and Enterprise Services (“RES”)
[email protected] +44 (0) 1524 (5)93298
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Background
Academic researcher
Company director University IP
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RES: Services to University Staff Help with finding and winning research grants (RSO) Assessment of commercial potential of research
Patenting Connecting researchers with the world outside Licences / spinouts / collaborative grants
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What is a 21st century university?
Teaching – graduates Research – ideas, solutions, papers Translating ideas into public policy and industrial use “impact”
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Intellectual Property
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www.ipo.gov.uk
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gb.espacenet.com
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Formal Intellectual Property
Copyright Design right Trade marks Patents Namespace names
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lancasoft
UNIVERSITY
New project/spinout Copyright Design right Trade marks Patents
lancasoft
®
www.ipo.gov.uk
Company name
lancasoft ltd
www.companieshouse.gov.uk
Internet domain name
lancasoft.com or .co.uk
www.nominet.org.uk Twitter hashtag?
#lancasoft
www.twitter.com
Facebook? www.facebook.com
www.facebook.com/lancasoft
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LANCASTER UNIVERSITY WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION G. A. Modefine S.A. v. A.R. Mani Case No. D2001-0537
1. The Parties The Complainant is G. A. Modefine S.A. of 90, Avenue de France – CH1004 Lausanne, Switzerland. The Respondent is Mr Anand Ramnath. Mani of 205-1139 Barclay Street, Vancouver, British Columbia V6E 1G8, Canada. 2. The Domain Name and Registrar The domain name in issue is ("the domain name"). The Registrar is Network Solutions. ….. http://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0537.html
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“We have started a major collaborative project with several universities and some companies. We chose a neat descriptive name – and it’s in all the project documentation, research council paperwork and the university web pages.” “I’ve just discovered that there is a company named identically and working in almost exactly the same area.” Project Ltd Project.co.uk Project® Class 09: Computer software Class 35: Provision of business information Class 38: Email services Class 42: Design and development of computer software.
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Registered Trade Mark
Lancaster
UNIVERSITY
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Copyright © LU researchers wrote a deep analysis of an area of social policy Then an agency of government decided to write a best practice report.
Some LU text was lifted verbatim Some unique LU case studies were used (paraphrased) The LU researchers were not credited The report has been withdrawn and is being rewritten Recognition that LU has influenced public policy
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Patents
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A granted patent does not give the right to do anything Because there may be underlying patents A granted patent is not necessarily valuable
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Patents give control of inventions
We can choose: • who commercialises our inventions, • how, • and under what terms
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Patents open doors “Hello I’m from Lancaster University. We are world experts in XXX and we’d like to collaborate with you”
“Hello, I’m from Lancaster University. We have an international patent application in XXX which we think would add value to your product line YYY”
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Patent
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Necessary when applying for a patent: Novelty Never made public in any way (“prior art”) Nothing of the same description ever published Confidentiality Agreements
Inventive step Not obvious to someone skilled in the domain
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Patent
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Process Various routes File an application with UK Patent Office Request a search report (“patentability” & “prior art”) 12 months to decide on international coverage or withdraw
Publication after 18 months National phase after 30 months Examinations and grant sometime later
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Patent costs
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UKIPO minimum fees (£100) + Patent attorney fees Probably £3-6K for UK only patent LU strategy - take risk on initial filing costs - then find a licensee to pay; or kill; or UK-only Because up to £100K over 10 yrs for major countries
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Examples Patent
Spinout
Licensee
Hybrid Instruments Ltd
Anasys Instruments Ltd
DGT Research Ltd
Becker Underwood
Digital Instrumentation
Water Quality Monitor
Thermal Microscopy
Seed treatment
MK Illumination GmbH Novel 3D display lighting
No patent
m-ventions Ltd
Sigma Aldrich Inc
Molarity Ltd
Isis Forensics Ltd
21 media
WSI Ltd
Phone software
Automated Business Intelligence
IP Television
Bio-chemicals
Network security software
Intelligent signage
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Case Study - Licensing
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Biochemistry group Made certain bio-chemicals for their own research work Noticed omission from major suppliers’ catalogues Found licensee and negotiated deal Materials shipped to licensee Products in licensee’s catalogue Sales royalties received and distributed
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Case Study - Licensing Licensee pays a percentage royalty on all sales
Inventors’ Agreement Revenue Sharing: Division of Net Revenues: University 50% Inventors 50% Subsequent subdivision of Net Revenues between Inventors: Prof A = X% Dr B = Y% Dr C = Z%
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Case Study – Instrumentation Staff had idea for new scientific instrument Knew the market well Patent applied for and granted Spinout company formed Academics are directors First sale delivered in 2007 Sales continue
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Case Study - Firefly
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March 2006 – Patent filed July 2009 – Licence signed Jan 2012 – Product Launch
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