Intellectual Property – Why it Matters Ann Lewendon Research & 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 Report Creation of spinouts in 2010-2012: Oxford 1 Edinburgh, University College London 2= Imperial College London 4 Nottingham 5 Aberdeen 6 Cambridge, 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 Industry 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 Materials Intangibles Software protection Database rights 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 Materials Intangibles Software protection Database rights 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 Bargain between inventor and state 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 Students 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?