Intellectual Property – The Basics

Christine Helliwell, PhDScottish Health Innovations Ltd

25th October 2012

Scottish Health Innovations Ltd

• Exist to facilitate the commercialisation of IP arising from NHS staff

• Publicly funded, work exclusively with NHS Scotland

• Cover all of Scotland, all therapy areas

• Activities include: – Idea evaluation – Market research – Arranging design, prototyping, manufacturing, testing– Regulatory issues– Route to market

What is Intellectual Property (IP)?

‘The novel tangible or intangible output of any idea-generating activity’

Like any form of property, IP has an owner and, if adequately protected, can be bought, sold or licensed

Who Owns My IP?

• Your employer

• Don’t worry! NHS Scotland has a revenue-sharing scheme, in order to encourage and reward innovation.

Why Should IP be Protected?

Prevent copying

Give investors confidence

Conversely, you need to be careful not to infringe other people’s IP rights.

Research exemption

PATENTSNovel inventions

COPYRIGHTLiterary, artistic works

KNOW HOWTrade secrets

DESIGN RIGHTSAesthetic features not related

to function

TRADE MARKSBadge of origin; logo,

brand name

Types of IP Protection

Types of IP protection

Patent (technological innovation)

Design Right (aesthetics)

Copyright (software, music, pictures, etc)

Trademark (name/logo)

Patent

• Legal document which provides the owner with the exclusive right to exploit the idea, in exchange for disclosure.– Up to 20 years– Provide technical solution to a problem– Novel (New)– Inventive (Non-obvious)– Undisclosed

• Exclusions– Discoveries, Scientific Theory, Mathematical Models,– Methods for performing mental acts or doing business– Computer software– An animal or plant variety– Methods of treatment of the human/animal by surgery or

therapy

Patents - Novelty & Obviousness

• Most patent issues turn on the question of novelty and obviousness of inventive step.

• Novel = Nothing in the public domain

• Non-obvious = not obvious to someone ‘skilled in the art’

• “Like someone claiming ownership of the circular steering wheel”

File application

Application published; provisional protection granted

Provisional search results published

Request substantive examination

Patent granted

UK Patent Applications: Timescales and Costs

Patents are expensive!

• UK filing fees: £230Renewal fees: £200-£600/year

• But you have to pay filing and renewal fees in every country in which you wish to have patent protection.

• This can soon run into £000’s every year.

• Patent lawyer fees are also a significant cost

18 months

6 months

12-24 months

3-4 years

Trademark

• Logos, shapes (2D or 3D), colours, words, musical jingle, form of packaging.

• Must be capable of being represented graphically.

• Registered trade mark ®Protection is indefinite (upon payment of renewal fees). Typical renewal period is every 10 years.

• Unregistered protection ™Rights in a trade mark can be acquired through use however a reputation must be shown to exist if any legal proceedings ensue.

Design Rights

The 2D or 3D appearance of a product; the lines, contours, colour, shape, textures or material

Does not apply to design features dictated by technical function

Registered Design • up to 25 years monopoly upon registration

Unregistered Design Right • Exists automatically for up to 15 years but not a monopoly

right

Copyright ©

• Protects expression of ideas• Arises automatically

To ensure copyright is acknowledged, sign and date all work

DurationLiterary, Drama, Musical and Artistic Works:- Lifetime of Author +70 YearsComputer Generated Work:- 50 YearsSound Recording:- 50 YearsBroadcasts:- 50 YearsTypographical arrangement:- 25 Years

ALL RIGHTS RESERVED.  No part of this publication may be copied, modified, reproduced, stored in a retrieval system or transmitted in any material form or by any means (whether electronic, mechanical, photocopying, recording or otherwise and whether or not incidentally to some other use of this publication) without the prior written permission of the copyright owner except in accordance with the provisions of the Copyright, Designs and Patents Act 1988. © [Name of Copyright Owner, Date]       

Know How (Trade Secrets)

• Keeping trade secrets is a viable alternative to patenting in a number of cases

• Coca-Cola recipe

• No protection against a 3rd party independently generating the same invention

Enforcement of IP Rights

• Protecting your IP does not guarantee that no-one will try to copy you.

• The onus is on the IP owner to identify and pursue infringers

• But if somebody has infringed your IP, sanctions are available

christine.helliwell@shil.co.uk01382 383935

www.shil.co.uk

mark.ferguson@nhs.net (NHS R&D Office)

Questions?

Useful Websites

www.ipo.gov.uk (UK IP office)www.wipo.int (World IP Organisation)

www.uspto.gov (US Patent and Trademark Office)www.epo.org (European Patent Office)