Transcript No Slide Title

Commercialising Research
Commercialising Research
Paul Dillon
Industrial Research Liaison Officer
Director, UTED
University Technology & Enterprise Development Unit
Ext. 2611
e-mail: [email protected]
OFFICE OF VICE PRESIDENT RESEARCH
Commercialising Research
•
•
•
•
•
•
UTED.
Introduction to Intellectual Property (IP).
Intellectual Property Management.
Commercialisation Routes.
Sponsored Research Agreements.
Some recommendations.
Introduction
Commercialising Research
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.
UTED
Commercialising Research
Office Staff:
• Paul Dillon, Director
• Technology Transfer Officer (new recruit)
• Prof. Tom Callanan, Mentor
• Denis Tierney, Manager, TTI
• Regina Fitzgerald, Admin
UTED
Commercialising Research
Introduction to Intellectual
Property
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
Commercialising Research
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?
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
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
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?
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
Commercialising Research
•
•
•
•
Useful – have practical purpose.
Can be constructed or used.
Can be applied on a certain scale.
Not a mere curiosity.
Industrial Application
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?
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
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
Commercialising Research
How do I know it is novel?
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
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
Commercialising Research
Questions?
Break
Commercialising Research
Intellectual Property
Management
Policies and Procedures
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
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
Commercialising Research
Issues addressed by policy
•
•
•
•
•
Ownership
Appraisal
Protection
Exploitation
Reward
IP Policy
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
Commercialising Research
• Distribution of net benefits.
– 50% Inventors
– 25% Department(s)/Research Centre
– 25% UL
IP Exploitation
Commercialising Research
• Invention Disclosure
• Commercialisation Decision process
– Market Study
•
•
•
•
IPR Assignment
Inventor Distribution Agreement
Forms of IPR Protection
Protecting the Invention/Copyright
– Patent Specification
– Patent Filing
Procedures
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
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
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
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
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
Commercialising Research
Commercialising
of
Research
Commercialising Research
• Commercialisation / Exploitation.
– Licence
– Sale
– Campus Companies.
• Commercial Agreements.
• Management of licences.
• Accounting for income.
Procedures
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
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
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
Commercialising Research
Sponsored Research
Agreements
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
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
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
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