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IP from Research at Lancaster Univeristy. By Dr Gavin Smith.
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IP from Research at Lancaster Univeristy. By Dr Gavin Smith.



Presentation Slides from InfoLab21 and the Intellectual Property Office's event: "Intellectual Property: Value Creation" at Lancaster House Hotel on 14th February 2012.

Presentation Slides from InfoLab21 and the Intellectual Property Office's event: "Intellectual Property: Value Creation" at Lancaster House Hotel on 14th February 2012.



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IP from Research at Lancaster Univeristy. By Dr Gavin Smith. IP from Research at Lancaster Univeristy. By Dr Gavin Smith. Presentation Transcript

  • IP from research at Lancaster Uni Dr Gavin Smith Intellectual Property Development Manager Research and Enterprise Services (“RES”) [email_address] +44 (0) 1524 (5)93298
  • Background Academic researcher Company director University IP
  • RES: Services to University Staff 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
  • What is a 21 st century university? Teaching – graduates Research – ideas, solutions, papers Translating ideas into public policy and industrial use “ impact”
  • Intellectual Property
  • www.ipo.gov.uk
  • gb.espacenet.com
  • Formal Intellectual Property Copyright Design right Trade marks Patents Namespace names
  • New project/spinout Copyright Design right Trade marks lancasoft ® Patents www.ipo.gov.uk Company name lancasoft ltd www.companieshouse.gov.uk Internet domain name lancasoft.com or .co.uk www.nominet.org.uk Twitter hashtag? #lancasoft www.twitter.com Facebook? www.facebook.com/lancasoft www.facebook.com lancasoft
    • WIPO Arbitration and Mediation Center
    • G. A. Modefine S.A. v. A.R. Mani
    • Case No. D2001-0537
    • 1. The Parties
    • The 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 Registrar
    • The domain name in issue is < armani.com > (&quot;the domain name&quot;). 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 Ltd Project.co.uk Project® Class 09: Computer software Class 35: Provision of business information Class 38: Email services Class 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 anything Because there may be underlying patents A granted patent is not necessarily valuable
  • Patents give control of inventions
    • We can choose:
      • who commercialises our inventions,
      • how,
      • and under what terms
  • Patents open doors “ 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”
  • Patent
    • Necessary when applying for a patent:
    • Novelty
      • Never made public in any way (“prior art”)
      • Nothing of the same description ever published
      • Confidentiality Agreements
    • Inventive step
      • Not obvious to someone skilled in the domain
  • Patent
    • Process
    • Various routes
    • File an application with UK Patent Office
    • Request a search report (“patentability” & “prior art”)
    • 12 months to decide on international coverage or withdraw
    • Publication after 18 months
    • National phase after 30 months
    • Examinations 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
  • Commercial IP portfolio Philips Intellectual Property and Standards employs about 450 people Patent families 12,000 Design Rights 49,000 Trademarks 33,000 Domain Names 2,600
  • Examples Spinout Licensee Patent Hybrid Instruments Ltd Digital Instrumentation DGT Research Ltd Water Quality Monitor Anasys Instruments Ltd Thermal Microscopy Becker Underwood Seed treatment MK Illumination GmbH Novel 3D display lighting No patent m-ventions Ltd Phone software Molarity Ltd Automated Business Intelligence 21 media IP Television Sigma Aldrich Inc Bio-chemicals Isis Forensics Ltd Network security software WSI Ltd Intelligent signage
  • Case Study - Licensing
    • Biochemistry group
    • Made certain bio-chemicals for their own research work
    • Noticed omission from major suppliers’ catalogues
    • Found licensee and negotiated deal
    • Materials shipped to licensee
    • Products in licensee’s catalogue
    • Sales royalties received and distributed
  • Case Study - Licensing
    • Inventors’ Agreement
    • Revenue Sharing:
    • Division of Net Revenues: University 50% Inventors 50%
    • Subsequent subdivision of Net Revenues between 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 instrument
    • Knew the market well
    • Patent applied for and granted
    • Spinout company formed
    • Academics are directors
    • First sale delivered in 2007
    • Sales continue
  • Case Study - Firefly March 2006 – Patent filed July 2009 – Licence signed Jan 2012 – Product Launch
  • The End