1. 1 Commercialising Research Paul Dillon Industrial Research Liaison Officer Director, UTED University Technology & Enterprise Development Unit Ext. 2611 e-mail: paul.dillon@ul.ie OFFICE OF VICE PRESIDENT RESEARCH

2. 2 Commercialising Research UTED. Introduction to Intellectual Property (IP). Intellectual Property Management. Commercialisation Routes. Sponsored Research Agreements. Some recommendations. Introduction

3. 3 Commercialising Research UTED University Technology and Enterprise Development Mission: Support and develop the University’s innovation activity. Encourage University - Industry linkages. Facilitate technology transfer, patenting, intellectual property rights, licensing, contracts, copyright, confidentiality agreements, etc. Assist development of projects from concept to initial business plan stage.

4. 4 Commercialising Research Office Staff: Paul Dillon, Director Technology Transfer Officer (new recruit) Prof. Tom Callanan, Mentor Denis Tierney, Manager, TTI Regina Fitzgerald, Admin UTED

5. 5 Commercialising Research Introduction to Intellectual Property

6. 6 Commercialising Research Intellectual Property = Research results with potential for commercial application. IP Protection = Legal means for protecting the results so that others may not copy. Technology Transfer = Allowing commercial companies to use the results for economic gain. Introduction - General Principles

7. 7 Commercialising Research Common Concept “I ntellectual property refers to creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce. ” Legal Concept Intellectual Property Law aims at safeguarding the rights of creators and producers of intellectual property by granting them certain time-limited rights to control the use of those productions. What is intellectual Property?

8. 8 Commercialising Research  Patents –New products or processes containing a new principle or idea  Registered Designs –New shape or configuration. aesthetic features  Copyright –New literature, music, drawings, sculptures, software - not registered  Design Rights –Industrial designs (3D)  Trade Marks –Distinctive names for products and services  Knowhow –Secret or proprietary information of commercial value - non statutory Forms of Intellectual Property

9. 9 Commercialising Research “A PATENT is a monopoly granted by a state to the first inventor of a new invention, in return for a full disclosure of the invention” ….sometimes known as ‘The Deal.’ Patents

10. 10 Commercialising Research A product or process that provides a new way of doing something, or offers a new solution to a problem. Newness - not in the public domain. Must involve an inventive step. Is susceptible to industrial application. Is not contrary to public order or morality. What can be patented?

11. 11 Commercialising Research  Disclosure of an invention before applying for a patent can destroy its novelty and prevent a valid patent being obtained.  Novelty implies that the invention is still secret.  Inventiveness - not obvious to a person skilled in the art when presented with the details of the problem. Involves a level of inspiration – the ”EUREKA” moment! Novelty and Inventiveness

12. 12 Commercialising Research Useful – have practical purpose. Can be constructed or used. Can be applied on a certain scale. Not a mere curiosity. Industrial Application

13. 13 Commercialising Research Scientific theory or mathematical method or equation. Method of playing a game, performing a mental act or doing business. Medical treatment, therapy or diagnosis methods. Specific animal or plant varieties. The presentation of information. A computer program. What can not be patented?

14. 14 Commercialising Research Process: First to file patent specification in any state. US Patent Law - first to invent. –Important to record earliest date of discovery, keep good lab/research notebooks and records. 12 months to submit final specification. Costs: €50,000-€100,000 over patent life (normally 20 years) Patents

15. 15 Commercialising Research Revision of the European Patent Convention Nov. 2000, Article 52 : “European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible to industrial applications” In reality software is seldom patented as it is difficult to copy – use copyright. Open Source: –be aware of licence terms, binding on the organisation. –talk to ITD. Patenting Computer Software

16. 16 Commercialising Research How do I know it is novel?

17. 17 Commercialising Research Right to produce one’s own work. Covers expression of ideas. Includes literary, dramatic, musical or artistic works. Protection is against copying and is not a monopoly as with patents. Same work can be conceived independently. Protection is automatic – subsists in work once created. Standardised in Europe via EU Directive and internationally via WIPO and WTO. Copyright

18. 18 Commercialising Research No registration required –Can register in US to get a filing date Important to prove earliest date of creation of work. Only protects the form of expression - not the underlying ideas. Software is considerered a literary work. Irish law: Copyright and Related Acts 2000. Copyright

19. 19 Commercialising Research Questions? Break

20. 20 Commercialising Research Intellectual Property Management Policies and Procedures

21. 21 Commercialising Research The National View in Third Level “National Code of Practice for Management of Intellectual Property in Publicly Funded Research”, Irish Council for Science, Technology and Innovation, January 2004. Sets out Public Research Organisation (PRO’s) obligations to manage and exploit research results which have commercial potential. Cited in the terms and conditions of many national sponsor bodies. Managing Intellectual Property

22. 22 Commercialising Research Purpose: Facilitate Transfer of UL research results into commercial arena. Provide and equitable distribution of any rewards. Look after the interests of –Inventor(s), –University –External organisation(s). Intellectual Property Policy

23. 23 Commercialising Research Ownership Appraisal Protection Exploitation Reward IP Policy Issues addressed by policy

24. 24 Commercialising Research Policy: University owns IP arising from UL research Commercial benefits shared with inventor(s). Coverage Audio-visual and Computer Materials, Inventions or Discoveries, Literary Works, Motifs and Insignia Exception -Literary Works IP Policy

25. 25 Commercialising Research Distribution of net benefits. –50% Inventors –25% Department(s)/Research Centre –25% UL IP Exploitation

26. 26 Commercialising Research Procedures Invention Disclosure Commercialisation Decision process –Market Study IPR Assignment Inventor Distribution Agreement Forms of IPR Protection Protecting the Invention/Copyright –Patent Specification –Patent Filing

27. 27 Commercialising Research Is there a market? Near, medium, long term Supports –Library/Internet –Marketing Centre for Small Business –Business Consulting Programme –Consultants (UTED) –CORD Grant (Development Agency) IP Appraisal

28. 28 Commercialising Research Information required –Indicate the technical field –description the known prior art (patent search) –description of the invention –examples –drawings –list of all claims - this is where monopoly is sought –abstract Patent Application

29. 29 Commercialising Research Multiple Inventors All need to be identified. Inventors share agreements. Research Records - VITAL for priority date US Patent –bound scientific notebooks –full descriptions, dates, signatures Assignment agreements. IP Ownership

30. 30 Commercialising Research Premature publication kills patent option (ex. US) Extreme care with posters, Interim Reports, Theses. Sponsored Research Contract- terms and conditions define the process. Advice: Contact UTED if you are about to publish and you believe results have commercial value. Use Confidentiality agreements - UTED. Publication

31. 31 Commercialising Research Good Practice Hardbound Book. Record all ideas, notes – “project diary”. No clear areas, strike out. Sign and date by supervisor or line manager – recommend weekly. Cross reference computer files, drawings set. Lab Notebooks

32. 32 Commercialising Research Commercialising of Research

33. 33 Commercialising Research Procedures Commercialisation / Exploitation. –Licence –Sale –Campus Companies. Commercial Agreements. Management of licences. Accounting for income.

34. 34 Commercialising Research Licence –Few norms - difficult to value IP –Range 0.5% - 15% –Rule of thumb - 25% of net profits Note: Most Companies have 20% profit hurdle rate - thus royalty circa 5%. IP Exploitation

35. 35 Commercialising Research Company set up to exploit University research results. May involve University faculty, staff and students. –Approval from supervisor/line manager University participates in equity –Negotiated but usually up to 15%. Negotiate use of IP with UTED –Agreement will normally also include licence Campus Company

36. 36 Commercialising Research Supports Patent Costs (UTED, National Patent Fund) Commercialisation Fund (EI) Market Research – Marketing Centre for Small Business Funding – CORD Grant (EI/Shannon Dev.) –Feasibility study/Business Plan Preparation Entrepreneur Training (VentureStart, Seminars) Business Plan Preparation (UTED contacts) Venture Capital introductions (UTED) Office Space – InnovationWorks (Shannon Dev.) Campus Company Supports

37. 37 Commercialising Research Sponsored Research Agreements

38. 38 Commercialising Research Agency Sponsored Research: EU- UL EI (CF)- UL Industrial- Sponsor/UL EPA, Marine, etc- UL Note: Most adopting National Code of Practice on IP. Read sponsor terms and conditions. Understand publication provisions. IP in Research Contracts

39. 39 Commercialising Research Industrial Research: Be conscious of your background IP. Use confidentiality agreements during negotiation. Contracts Terms vary. UL Policy 50/50 sharing of IP arising. Grand sponsor rights to exploit results. Agreed Royalty Schedule. No warranties/guarantees given – “buyer beware”. Sponsor sees all publications and has right to object. IP in Research Contracts

40. 40 Commercialising Research EU Contracts Background knowledge - Prior art Foreground Knowledge - Project work Contractor owns IP Joint Ownership Technology Implementation Plan Each contractor entitled to exploit Mutual granting of Royalty Free rights. If no exploitation - “fair and reasonable’ licence arrangements Consortium Agreement. IP in Research Contracts

41. 41 Commercialising Research Some recommendations Understand IP issues in your research agreements. Keep hardbound records signed and dated of research. Consider commercial value of research results before publishing. Use confidentiality agreements where appropriate. Seek advice from UTED. Conclusion