1 commercialising research paul dillon industrial research liaison officer director, uted university...

Commercialising Research


Paul DillonIndustrial Research Liaison Officer

Director, UTEDUniversity Technology & Enterprise Development Unit

Ext. 2611e-mail: [email protected]

OFFICE OF VICE PRESIDENT RESEARCH


• UTED.

• Introduction to Intellectual Property (IP).

• Intellectual Property Management.

• Commercialisation Routes.

• Sponsored Research Agreements.

• Some recommendations.

Introduction


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.


Office Staff:

• Paul Dillon, Director

• Technology Transfer Officer (new recruit)

• Prof. Tom Callanan, Mentor

• Denis Tierney, Manager, TTI

• Regina Fitzgerald, Admin

UTED


Introduction to Intellectual Property


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


Common Concept “Intellectual 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?


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


“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


• 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?


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


• Useful – have practical purpose.

• Can be constructed or used.

• Can be applied on a certain scale.

• Not a mere curiosity.

Industrial Application


• 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?


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


• 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


How do I know it is novel?


• 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


• 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


Questions?

Break


Intellectual Property Management

Policies and Procedures


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


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


• Ownership

• Appraisal

• Protection

• Exploitation

• Reward

IP Policy

Issues addressed by policy


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


• Distribution of net benefits.

– 50% Inventors

– 25% Department(s)/Research Centre

– 25% UL

IP Exploitation


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


• 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


• 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


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


• 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


• 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


Commercialising of

Research


Procedures

• Commercialisation / Exploitation. – Licence– Sale– Campus Companies.

• Commercial Agreements.

• Management of licences.

• Accounting for income.


• 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


• 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


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

1 commercialising research paul dillon industrial research liaison officer director, uted university...

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