Intellectual Property – Why it Matters

Ann LewendonResearch & Innovation, University of Aberdeen

Why me?• Biochemistry (enzymology) background

• Founder of spin out company (PanTherix Ltd)

• Managed process of taking patents through to grant

• Novel chemical entities, processes and biologics

• Current role – management of University of Aberdeen intellectual property

Praxis Unico Annual ReportCreation of spinouts in 2010-2012:

Oxford 1Edinburgh, University College London 2=Imperial College London 4Nottingham5

Aberdeen 6Cambridge, Glasgow, Strathclyde, Heriot Watt 7=

Why do you need to know about IP?

• IP is valuable – in itself and as a tool for economic growth

• To know what to do if you generate IP

• To understand how IP can be an asset to Universities and Industry

• Impact

• New products and services

• Value and competitiveness

Value of IP• Universities

• Impact

• Economic through licences, spin outs

• Materials

• Working with industry

• Industry

• Protecting competitive position

• Monopoly on new products

• Profit

Why do Universities protect IP?

• Funders terms and conditions

• RCUK, charities, industry

• Economic benefit

• Licence income, sale of equity

• Impact

• Universities required to show impact from research

• Promising route to market

• Without IP protection, technology might not develop

Impact• Significant component of REF

• Many forms of impact

• Economic, social, public engagement

• IP protection often underpins economic impact projects

What is Intellectual Property?

• Information and ideas generated by innovators

• Inventions

• Designs and drawings

• Databases

• Confidential know-how, trade secrets

Types of IP

• Patents

• Copyright

• Trade Marks

• Designs and Design Right

• Confidential Know-How / Trade Secrets

• Materials

• Intangibles

• Software protection

• Database rights

• Domain names

• Personal expertise

Types of IP

• Patents

• Copyright

• Trade Marks

• Designs and Design Right

• Confidential Know-How / Trade Secrets

• Materials

• Intangibles

• Software protection

• Database rights

• Domain names

• Personal expertise

University focus on patents• Suitable for technological innovations

• Protects inventions for licence to industry or spin out company

• Permits publishing of idea after patent has been filed

Patents• Registered right

• An application must be filed and patent granted by examiner

• Bargain between inventor and state

• Inventor pays fees and provides technical description of invention

• State awards Inventor(s) exclusive rights for 20 years

• Right to stop others making or doing

What can be patented?• Patents are for “technological innovation”

• Three crucial requirements:

• Novel – not been made public, in any way, anywhere, prior to the filing date

• Must involve an ‘inventive step’ – not obvious, or a simple adaptation, or a combination of known ideas

• Must be capable of industrial application – made or used in some kind of industry

Patents – technical effect• Patents cover:

• How things work

• Process of formulating drug for oral administration

• Using an test to diagnose mental illness

• How they are made

• Method of chemical synthesis for drug compound

• General method for producing biologic reagents

• What they are made of

• Composition of matter – covers drug molecule structure

• New material for medical device

Novelty of Invention• Keep Invention secret

• Publication, demonstration, word of mouth disclosure counts as making invention public and not patentable

• If you need to tell – sign Confidentiality (Non-Disclosure) Agreement first

Licensing• Discovery of recombinant DNA technology

led by Stanford University in 1973 spurred development of the biotechnology industry

• Patent for PCR technology was sold by Cetus to Roche in 1991, 11 years after patenting, for $300m

Patent Process 1• Priority application

• Sets priority date

• Further exemplification during priority year

• Patent Cooperation Treaty – or national applications (at 12 months)

• Publication (at 18 months)

• Preferably no publication in scientific journals prior to 18 months

• WOISA/ISR

• First indication of ease/difficulty of examination

• National applications (at 30 or 31 months depending on territory)

Patent Process 2• Examination through national offices

• Office Actions and Responses

• Arguments for and against inventive step and novelty

• Revision and / or narrowing of claims

• Same claims in each country?

• Grant at national patent offices

• Usually from 4 plus years from filing – depends on territory

• Grant gives protection for 20 years from filing date (not date of grant)

Drawbacks of Patents• Territorial

• protection only in territories where patent granted

• Expensive

• Worldwide coverage – up to £150,000

• UK coverage – up to £20,000

• Publication of Idea

• Competitors have access

• Free to use if patent not granted

Changing landscape• Type of inventions protectable through

patents is not static

• Isolated genes, any antibody vs. novel target, isolated natural products

• Courts rule on what is patentable

• Mayo vs. Prometheus (diagnostics)

• Association for Molecular Pathology, et al. vs. Myriad Genetics, Inc. (isolated genes)

Who owns your IP?• Staff

• UK legal position – IP generated during your duties is owned by your employer

• Students

• University owns IP of postgraduate students

• Assigned to University upon registration

What to do if you have an idea

• Talk to your supervisor and your Technology Transfer Office

• Talk to them before you talk to anyone else

• Let them know if you plan to publish soon (even if it’s just a poster presentation)

Is IP necessary to achieve impact?

• Ideas may not be patentable but may be exploitable

• Protection through trade secrets, proprietary know-how or expertise

• Business models where monopoly is not required

Why IP matters• Models and materials supplied under Material

Transfer Agreements

• Who owns results and material developed using these?

• Affects funding possibilities

• Key example – patented drugs supplied by Pharma

• Condition of supply is that Pharma owns results or can delay publication

Why IP matters• Collaboration with Industry

• Industry has an option to acquire IP

• University has an obligation to identify and protect IP

Why IP matters• Innovation in life sciences has potential to be

disruptive technology

• Potential for significant economic impact

• Benefit to University:

• Impact

• Economic

• IP protection is necessary to secure monopoly to allow time and resource for technology development

Enterprise Campus

• Scottish Funding Council funded project

• High growth spin outs and start ups from postgraduate students

• Hubs at Aberdeen, Edinburgh, Strathclyde

• Open to all Scottish Universities

• Business support and advice

• Aberdeen/Dundee; Edinburgh/ St Andrews

Any questions?