Copyright © Lancaster University 2012 LANCASTER U N I V E R S I T Y Dr Gavin Smith Intellectual Property Development Manager Research and Enterprise Services.

Copyright © Lancaster University 2012

LANCASTERU N I V E R S I T Y

Dr Gavin SmithIntellectual Property Development ManagerResearch and Enterprise Services (“RES”)

[email protected]+44 (0) 1524 (5)93298

IP from research at Lancaster Uni



Academic researcher

Company director

University IP

Background



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

RES: Services to University Staff



Teaching – graduates

Research – ideas, solutions, papers

Translating ideas into public policy and industrial use

“impact”

What is a 21st century university?





Intellectual Property


LANCASTERU N I V E R S I T Ywww.ipo.gov.uk


LANCASTERU N I V E R S I T Ygb.espacenet.com



CopyrightDesign rightTrade marksPatents

Namespace names

Formal Intellectual Property



CopyrightDesign rightTrade marks lancasoft

®

Patentswww.ipo.gov.uk

Company name lancasoft ltdwww.companieshouse.gov.uk

Internet domain name lancasoft.com or .co.ukwww.nominet.org.uk

Twitter hashtag? #lancasoftwww.twitter.com

Facebook? www.facebook.com/lancasoft www.facebook.com

New project/spinout

lancasoft



WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISIONG. A. Modefine S.A. v. A.R. Mani

Case No. D2001-0537 1. The PartiesThe Complainant is G. A. Modefine S.A. of 90, Avenue de France – CH-1004 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 RegistrarThe domain name in issue is <armani.com> ("the domain name"). The Registrar is Network Solutions.

….. http://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0537.html



“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 LtdProject.co.ukProject®Class 09: Computer softwareClass 35: Provision of business informationClass 38: Email servicesClass 42: Design and development of computer software.



Registered Trade Mark

Lancaster



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

Copyright ©



Patents

A granted patent does not give the right to do anythingBecause there may be underlying patents

A granted patent is not necessarily valuable



We can choose:

• who commercialises our inventions,• how, • and under what terms

Patents give control of inventions



“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”

Patents open doors



Patent

Necessary when applying for a patent:

Novelty Never made public in any way (“prior art”)Nothing of the same description ever publishedConfidentiality Agreements

Inventive step Not obvious to someone skilled in the domain



Patent

Process

Various routes

File an application with UK Patent OfficeRequest a search report (“patentability” & “prior art”)12 months to decide on international coverage or withdraw

Publication after 18 months

National phase after 30 monthsExaminations and grant sometime later



Patent costs

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



Examples

Spinout Licensee

Patent Hybrid Instruments LtdDigital Instrumentation

DGT Research LtdWater Quality Monitor

Anasys Instruments LtdThermal Microscopy

Becker UnderwoodSeed treatment

MK Illumination GmbHNovel 3D display lighting

No patent m-ventions LtdPhone software

Molarity LtdAutomated Business Intelligence

21 mediaIP Television

Sigma Aldrich IncBio-chemicals

Isis Forensics LtdNetwork security software

WSI LtdIntelligent signage



Case Study - Licensing

Biochemistry groupMade certain bio-chemicals for their own research workNoticed omission from major suppliers’ catalogues

Found licensee and negotiated dealMaterials shipped to licenseeProducts in licensee’s catalogueSales royalties received and distributed



Case Study - Licensing

Inventors’ Agreement

Revenue Sharing:Division of Net Revenues:

University 50% Inventors 50%

Subsequent subdivision of Net Revenuesbetween Inventors:

Prof A = X%Dr B = Y%Dr C = Z%

Licensee pays a percentage royalty on all sales



Case Study – Instrumentation

Staff had idea for new scientific instrumentKnew the market wellPatent applied for and grantedSpinout company formedAcademics are directors

First sale delivered in 2007Sales continue



Case Study - Firefly

March 2006 – Patent filedJuly 2009 – Licence signedJan 2012 – Product Launch



The End

Copyright © Lancaster University 2012 LANCASTER U N I V E R S I T Y Dr Gavin Smith Intellectual Property Development Manager Research and Enterprise Services.

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