Intellectual Property – The Basics Christine Helliwell, PhD Scottish Health Innovations Ltd 25 th October 2012

Scottish Health Innovations Ltd Exist to facilitate the commercialisation of IP arising from NHS staff Publicly funded, work exclusively with NHS Scotland Cover all of Scotland, all therapy areas Activities include: –Idea evaluation –Market research –Arranging design, prototyping, manufacturing, testing –Regulatory issues –Route to market

What is Intellectual Property (IP)? ‘The novel tangible or intangible output of any idea-generating activity’ Like any form of property, IP has an owner and, if adequately protected, can be bought, sold or licensed

Who Owns My IP? Your employer Don’t worry! NHS Scotland has a revenue-sharing scheme, in order to encourage and reward innovation.

Why Should IP be Protected?  Prevent copying  Give investors confidence  Conversely, you need to be careful not to infringe other people’s IP rights.  Research exemption

PATENTS Novel inventions COPYRIGHT Literary, artistic works KNOW HOW Trade secrets DESIGN RIGHTS Aesthetic features not related to function TRADE MARKS Badge of origin; logo, brand name Types of IP Protection

Types of IP protection Patent (technological innovation) Design Right (aesthetics) Copyright (software, music, pictures, etc) Trademark (name/logo)

Patent Legal document which provides the owner with the exclusive right to exploit the idea, in exchange for disclosure. –Up to 20 years –Provide technical solution to a problem –Novel (New) –Inventive (Non-obvious) –Undisclosed Exclusions –Discoveries, Scientific Theory, Mathematical Models, –Methods for performing mental acts or doing business –Computer software –An animal or plant variety –Methods of treatment of the human/animal by surgery or therapy

Patents - Novelty & Obviousness Most patent issues turn on the question of novelty and obviousness of inventive step. Novel = Nothing in the public domain Non-obvious = not obvious to someone ‘skilled in the art’ “Like someone claiming ownership of the circular steering wheel”

File application Application published; provisional protection granted Provisional search results published Request substantive examination Patent granted UK Patent Applications: Timescales and Costs Patents are expensive! UK filing fees: £230 Renewal fees: £200-£600/year But you have to pay filing and renewal fees in every country in which you wish to have patent protection. This can soon run into £000’s every year. Patent lawyer fees are also a significant cost 18 months 6 months months 3-4 years

Trademark Logos, shapes (2D or 3D), colours, words, musical jingle, form of packaging. Must be capable of being represented graphically. Registered trade mark ® Protection is indefinite (upon payment of renewal fees). Typical renewal period is every 10 years. Unregistered protection ™ Rights in a trade mark can be acquired through use however a reputation must be shown to exist if any legal proceedings ensue.

Design Rights The 2D or 3D appearance of a product; the lines, contours, colour, shape, textures or material Does not apply to design features dictated by technical function Registered Design up to 25 years monopoly upon registration Unregistered Design Right Exists automatically for up to 15 years but not a monopoly right

Copyright © Protects expression of ideas Arises automatically To ensure copyright is acknowledged, sign and date all work Duration Literary, Drama, Musical and Artistic Works:- Lifetime of Author +70 Years Computer Generated Work:-50 Years Sound Recording:- 50 Years Broadcasts:- 50 Years Typographical arrangement:-25 Years ALL RIGHTS RESERVED. No part of this publication may be copied, modified, reproduced, stored in a retrieval system or transmitted in any material form or by any means (whether electronic, mechanical, photocopying, recording or otherwise and whether or not incidentally to some other use of this publication) without the prior written permission of the copyright owner except in accordance with the provisions of the Copyright, Designs and Patents Act © [Name of Copyright Owner, Date]

Know How (Trade Secrets) Keeping trade secrets is a viable alternative to patenting in a number of cases Coca-Cola recipe No protection against a 3 rd party independently generating the same invention

Enforcement of IP Rights Protecting your IP does not guarantee that no-one will try to copy you. The onus is on the IP owner to identify and pursue infringers But if somebody has infringed your IP, sanctions are available

(NHS R&D Office) Questions? Useful Websites (UK IP office) (World IP Organisation) (US Patent and Trademark Office) (European Patent Office)