Copyright © Gavin Smith and University of Lancaster 2016 Dr Gavin Smith Intellectual Property Development Manager Research and Enterprise Services (“RES”) +44 (0) 1524 (5)93298 Introduction to Patents at Lancaster Uni

Copyright © Gavin Smith and University of Lancaster 2016 Any intangible asset consisting of human knowledge and ideas Formal: Patents, trade marks, design-rights, domain-names, etc Informal: Software, copyright, know-how, trade-secrets, etc (Formal means registered) Intellectual Property

Copyright © Gavin Smith and University of Lancaster 2016 State intervention in markets Short-term monopoly rights to encourage innovation Intellectual Property Rights

Copyright © Gavin Smith and University of Lancaster

Copyright © Gavin Smith and University of Lancaster 2016 Patents

Copyright © Gavin Smith and University of Lancaster 2016 Why patent? Validation that research is “novel” and “inventive” Door-opener to external organisations May return impact case studies May return industrial income May return licensing income

Copyright © Gavin Smith and University of Lancaster 2016 Granted patent PDFs – RES website

Copyright © Gavin Smith and University of Lancaster 2016 Patents Eligible Products or processes New functional or technical aspects How things work What they do How they do it How they are made and of what Most patents are incremental technology improvements

Copyright © Gavin Smith and University of Lancaster 2016 Patents Granted by a state to an inventor Territorial right for a limited period (20 yrs). Stops others making, importing/using/selling invention (unless with permission of the owner of the patent) A patent can be bought/sold/rented/hired/licensed A patent does not give you the right to do anything Because there may be underlying patents A patent is not necessarily valuable

Copyright © Gavin Smith and University of Lancaster 2016 Patent ineligibility (UK) a discovery an aesthetic creation or artistic work [©] a scientific theory or mathematical method (algorithm) a method for a mental act, playing a game, doing business a presentation of information a computer program There must be a technical effect (ie hardware)

Copyright © Gavin Smith and University of Lancaster 2016 Patent material a device a composition of matter a method (of doing something technical) software (“as such”) is excluded computer-implemented inventions are allowed; if they … -are ways of making generic computers better; or -deliver a technical effect outside the machine There must be something technical

Copyright © Gavin Smith and University of Lancaster 2016 Patent application Describe the invention in full detail (“description”) - include the generic case - there must be at least one fully worked example - usually some technical drawings State the monopoly sought (“claim”) - a single sentence [enabled by the description] Send PDFs to UK Patent Office. That date is the “priority date”

Copyright © Gavin Smith and University of Lancaster 2016 Example patent claims 1.A wheel for a bicycle where the wheel has the form of an ellipse, and is adapted to take disc brakes. 2.A wheel as in Claim 1 where the ratio of long and short axes of the ellipse is between 1.05 and 1.20 inclusive. 3.A wheel as in any previous Claim where the wheel centres are shaped so that all the spokes are the same length.

Copyright © Gavin Smith and University of Lancaster 2016 Patent requirements - Exam Eligibility Not “excluded matter” Capable of industrial application + ENABLED At least one example fully described in the application. No missing steps or components Novelty Never made public in any way (before priority date) Nothing of the same description ever published Confidentiality Agreements Inventive step Not obvious to someone skilled in the domain

Copyright © Gavin Smith and University of Lancaster 2016 Exam - patent claim parsing

Copyright © Gavin Smith and University of Lancaster 2016

Patenting process Various routes File an application with UK Patent Office Request a search report (“patentability” & “prior art”) At about 6 months search report sent (private) 12 months to decide on international coverage or “PCT” At 15 months PCT search report sent (private) Publication after 18 months (or may withdraw beforehand) PCT ends; must enter National phase after 30 months Examination & grant sometime later

Copyright © Gavin Smith and University of Lancaster 2016 Patent costs Fees UKIPO fees (~£200) + Patent attorney fees Probably £3-6K for UK only patent Up to £100K for coverage of major industrial countries LU strategy - fund initial filing costs - then find a licensee to pay; or kill; or UK-only

Copyright © Gavin Smith and University of Lancaster 2016 Commercial portfolio Patent families12,000 Design Rights49,000 Trademarks33,000 Domain Names2,600 Philips Intellectual Property and Standards employs about 450 people

Copyright © Gavin Smith and University of Lancaster 2016 Who owns IP? For almost all academics & staff, the University owns IP “Employees have employment contracts that contain ownership of intellectual property created by virtue of the terms of their employment” “The University is obliged to ensure that intellectual property with commercial potential, arising from research or work supported by public funds, is protected and exploited wherever possible”.

Copyright © Gavin Smith and University of Lancaster 2016 LU policy When the University commercialises IP: Fifty percent of the net revenue distributed to inventors Where more than one person is involved, payments shall be made in the proportions agreed between them.

Copyright © Gavin Smith and University of Lancaster 2016 LU process What is the idea?Disclosure Is it new? What is similar?Due-diligence Is it commercial?Commercial Appraisal Who funded/owns it? Who has worked on it? Due-diligence Inventors’ Agt Can it be protected?Due-diligence Any risks? Enforceable?Due-diligence

Copyright © Gavin Smith and University of Lancaster 2016 espacenet

Copyright © Gavin Smith and University of Lancaster 2016 Firefly March 2006 – Patent filed July 2009 – Licence signed January 2014 – Product Launch

Copyright © Gavin Smith and University of Lancaster 2016 The End