1. Intellectual Property – Why it Matters
Ann Lewendon
Research & Innovation, University of Aberdeen

2. Why me? Biochemistry (enzymology) background
Founder of spin out company (PanTherix Ltd)
Managed process of taking patents through to grant
Novel chemical entities, processes and biologics
Current role – management of University of Aberdeen intellectual property

3. Praxis Unico Annual Report
Creation of spinouts in : Oxford Edinburgh, University College London 2= Imperial College London Nottingham Aberdeen Cambridge, Glasgow, Strathclyde, Heriot Watt 7=

4. Why do you need to know about IP?
IP is valuable – in itself and as a tool for economic growth
To know what to do if you generate IP
To understand how IP can be an asset to Universities and Industry
Impact
New products and services
Value and competitiveness

5. Value of IP Universities Industry Impact
Economic through licences, spin outs
Materials
Working with industry
Industry
Protecting competitive position
Monopoly on new products
Profit

6. Why do Universities protect IP?
Funders terms and conditions
RCUK, charities, industry
Economic benefit
Licence income, sale of equity
Impact
Universities required to show impact from research
Promising route to market
Without IP protection, technology might not develop

7. Impact Significant component of REF Many forms of impact
Economic, social, public engagement
IP protection often underpins economic impact projects

8. What is Intellectual Property?
Information and ideas generated by innovators
Inventions
Designs and drawings
Databases
Confidential know-how, trade secrets

9. Types of IP Materials Intangibles Software protection Database rights
Patents
Copyright
Trade Marks
Designs and Design Right
Confidential Know- How / Trade Secrets
Materials
Intangibles
Software protection
Database rights
Domain names
Personal expertise

10. Types of IP Materials Intangibles Software protection Database rights
Patents
Copyright
Trade Marks
Designs and Design Right
Confidential Know- How / Trade Secrets
Materials
Intangibles
Software protection
Database rights
Domain names
Personal expertise

11. University focus on patents
Suitable for technological innovations
Protects inventions for licence to industry or spin out company
Permits publishing of idea after patent has been filed

12. Patents Registered right Bargain between inventor and state
An application must be filed and patent granted by examiner
Bargain between inventor and state
Inventor pays fees and provides technical description of invention
State awards Inventor(s) exclusive rights for 20 years
Right to stop others making or doing

13. What can be patented? Patents are for “technological innovation”
Three crucial requirements:
Novel – not been made public, in any way, anywhere, prior to the filing date
Must involve an ‘inventive step’ – not obvious, or a simple adaptation, or a combination of known ideas
Must be capable of industrial application – made or used in some kind of industry

14. Patents – technical effect
Patents cover:
How things work
Process of formulating drug for oral administration
Using an test to diagnose mental illness
How they are made
Method of chemical synthesis for drug compound
General method for producing biologic reagents
What they are made of
Composition of matter – covers drug molecule structure
New material for medical device

15. Novelty of Invention Keep Invention secret
Publication, demonstration, word of mouth disclosure counts as making invention public and not patentable
If you need to tell – sign Confidentiality (Non-Disclosure) Agreement first

16. Licensing
Discovery of recombinant DNA technology led by Stanford University in 1973 spurred development of the biotechnology industry
Patent for PCR technology was sold by Cetus to Roche in 1991, 11 years after patenting, for $300m

17. Patent Process 1 Priority application
Sets priority date
Further exemplification during priority year
Patent Cooperation Treaty – or national applications (at 12 months)
Publication (at 18 months)
Preferably no publication in scientific journals prior to 18 months
WOISA/ISR
First indication of ease/difficulty of examination
National applications (at 30 or 31 months depending on territory)

18. Patent Process 2 Examination through national offices
Office Actions and Responses
Arguments for and against inventive step and novelty
Revision and / or narrowing of claims
Same claims in each country?
Grant at national patent offices
Usually from 4 plus years from filing – depends on territory
Grant gives protection for 20 years from filing date (not date of grant)

19. Drawbacks of Patents Territorial
protection only in territories where patent granted
Expensive
Worldwide coverage – up to £150,000
UK coverage – up to £20,000
Publication of Idea
Competitors have access
Free to use if patent not granted

20. Changing landscape
Type of inventions protectable through patents is not static
Isolated genes, any antibody vs. novel target, isolated natural products
Courts rule on what is patentable
Mayo vs. Prometheus (diagnostics)
Association for Molecular Pathology, et al. vs. Myriad Genetics, Inc. (isolated genes)

21. Who owns your IP? Staff Students
UK legal position – IP generated during your duties is owned by your employer
Students
University owns IP of postgraduate students
Assigned to University upon registration

22. What to do if you have an idea
Talk to your supervisor and your Technology Transfer Office
Talk to them before you talk to anyone else
Let them know if you plan to publish soon (even if it’s just a poster presentation)

23. Is IP necessary to achieve impact?
Ideas may not be patentable but may be exploitable
Protection through trade secrets, proprietary know-how or expertise
Business models where monopoly is not required

24. Why IP matters
Models and materials supplied under Material Transfer Agreements
Who owns results and material developed using these?
Affects funding possibilities
Key example – patented drugs supplied by Pharma
Condition of supply is that Pharma owns results or can delay publication

25. Why IP matters Collaboration with Industry
Industry has an option to acquire IP
University has an obligation to identify and protect IP

26. Why IP matters
Innovation in life sciences has potential to be disruptive technology
Potential for significant economic impact
Benefit to University:
Impact
Economic
IP protection is necessary to secure monopoly to allow time and resource for technology development

27. Enterprise Campus Scottish Funding Council funded project
High growth spin outs and start ups from postgraduate students
Hubs at Aberdeen, Edinburgh, Strathclyde
Open to all Scottish Universities
Business support and advice
Aberdeen/Dundee; Edinburgh/ St Andrews

28. Any questions?