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IP from research at Lancaster Uni
Dr Gavin Smith
Intellectual Property Development Manager
Research and Enterprise Services (“RES”)
g.smith@lancaster.ac.uk
+44 (0) 1524 (5)93298
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Background
Academic researcher
Company director
University IP
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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
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What is a 21st century university?
Teaching – graduates
Research – ideas, solutions, papers
Translating ideas into public policy and industrial use
“impact”
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Intellectual Property
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www.ipo.gov.uk
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gb.espacenet.com
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Formal Intellectual Property
Copyright
Design right
Trade marks
Patents
Namespace names
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lancasoft
UNIVERSITY
New project/spinout
Copyright
Design right
Trade marks
Patents
lancasoft
®
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
www.facebook.com/lancasoft
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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
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 – CH1004 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> ("the domain name"). The
Registrar is Network Solutions.
…..
http://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0537.html
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“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.
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Registered Trade Mark
Lancaster
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Copyright ©
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
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Patents
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A granted patent does not give the right to do anything
Because there may be underlying patents
A granted patent is not necessarily valuable
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Patents give control of inventions
We can choose:
• who commercialises our inventions,
• how,
• and under what terms
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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”
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Patent
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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
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Patent
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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
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Patent costs
UNIVERSITY
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
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Examples
Patent
Spinout
Licensee
Hybrid Instruments Ltd
Anasys Instruments Ltd
DGT Research Ltd
Becker Underwood
Digital Instrumentation
Water Quality Monitor
Thermal Microscopy
Seed treatment
MK Illumination GmbH
Novel 3D display lighting
No patent
m-ventions Ltd
Sigma Aldrich Inc
Molarity Ltd
Isis Forensics Ltd
21 media
WSI Ltd
Phone software
Automated Business Intelligence
IP Television
Bio-chemicals
Network security software
Intelligent signage
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Case Study - Licensing
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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
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Case Study - Licensing
Licensee pays a percentage royalty on all sales
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%
UNIVERSITY
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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
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Case Study - Firefly
UNIVERSITY
March 2006 – Patent filed
July 2009 – Licence signed
Jan 2012 – Product Launch
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The End
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