Intellectual Property Rights
Margaret Lawlor
Business Development Manager
Faculty of Medical Sciences
2015
copyright©NewcastleUniversity 2015
Intellectual Property
Open Innovation & Intellectual Property
Principles and Recommendations
The goal is to position Newcastle University as the partner of
choice in joint/collaborative research with industry. IP should be
viewed as a facilitator to collaboration not as an inhibitor
Research and Enterprise Services
– The Faculty Enterprise Teams works to protect and
commercialise research results arising from all schools and
institutes within the University
– A substantial amount of income and impact can be
generated through successful exploitation of intellectual
property which can benefit the University, its employees and
research sponsors
– Majority of bioscience/healthcare innovation still comes from
academia
– In order to realise the true value of intellectual property, it
must be properly protected and managed.
So what is Intellectual Property?
•
•
•
•
•
•
•
•
•
•
•
•
•
Know how
Data
Assays
Cell models
Medical devices
Engineered proteins
Antibodies
Guidelines
Toolkits
Software
Interventions
Questionnaires
Study Protocols
•
•
•
•
•
Biomarkers
Drug targets
Therapeutic agents
Apps
Etc, etc
Protecting Inventions
•
Can it be protected?
– Patents: A legal right granted by a country
– Owner can prevent others in that country from using, making or
selling the technology for approx. 20 years
– Must be ‘novel’, ‘non-obvious’ and ‘capable of industrial
application’
– Other ways to protect:
• Trade Secrecy • Trademark • Copyright –
• Design-
Commercial Evaluation- Role of BDM
• Is it better than what’s gone before?
– Small improvement or large step
• How big is the potential market?
• Is that market currently satisfied?
• How much development is needed?
• What are competitors developing?
Creating Value to Attract Industry
• The University teaches and researches: it doesn’t take
products to market!
•
For that, we need partners.
•
Companies need an incentive to take on the risk and financial investment
– Patent protection provides a time-limited monopoly which is essential to offset
the cost/risk associated with drug development
•
Drug development is very high risk and costly (£700m +, 10 years to bring a
drug to market)
•
Intellectual property is an asset that can be used to generate money to fund
further research, develop the university and potentially benefit inventors
and society
Confidentiality
– MUST sign a confidentiality agreement
– Any information received or generated during the course of your time at
University should be kept secret and confidential (unless known to be in the
public domain)
• Lab meetings
• Internal seminars
• Coffee breaks
– All proposed publications to be submitted to your
supervisor at least one month prior to
submission/presentation
• Abstracts
• Posters
• Presentations
• Manuscripts
– If publication contains patentable invention or commercially sensitive
information you could be asked to withhold publication for up to 4 months.
Intellectual Property Assignment
– This Policy sets down that Research Students agree that, as a condition of
being accepted for admission to the University, they accept that they may be
required to assign the IP associated with the project that they conduct in
pursuance of their University award (" Student Project”) to the University and,
upon request, they will sign documents and do all things necessary to give
effect to that assignment.
– Agreeing to assign (transfer ownership) of intellectual property developed
during your Research Project to Newcastle University
• University will pay all costs associated with protecting and
commercialising the intellectual property
– Be treated as staff and receive a share of any revenues obtained by the
University upon commercialisation of your technology
– Agree to discuss your contribution to intellectual property, be named as an
inventor (if appropriate) and complete/sign any necessary documents
Laboratory Notebooks
• A Laboratory Notebook can contain key information on the “reduction to
practice” of an invention- important as proof of invention
•Notebooks should have permanent binding, not loose leafed
•Notebook should be signed and dated by the inventor and co-signed by a
witness who is not an inventor
•Notebook entries ie experiments must be dated and clearly describe the
inventive acts carried out by the inventor
•Entries should be legible, use permanent ink, do not use jargon, explain all
terms
Further information
• Enterprise team, Faculty of Medical Sciences
• Ground floor, Leech building
• fmsenterprise@ncl.ac.uk
• 208 3461
Thank you!