1. STEPS Dec ‘12 When to Patent and When to Publish

2. STEPS Dec ‘12 The Wealth of Nations Source; Where is the Wealth of Nations? World Bank 2005 data

3. STEPS Dec ‘12 Conversion is Key Innovation is the way of transforming the resources of an enterprise through the creativity of people into new resources and wealth (Paul Schumann)

4. STEPS Dec ‘12 Knowledge Economy Government Policy and Structure Irish Owned Enterprise Policy Analysis and Advice Inward Investment Scientific Research Science Funding & Industry Development in one Dept.

5. STEPS Dec ‘12 Knowledge Economy Government Policy and Structure Strategy for Science, Technology & Innovation (2007 to 2013); building R&D capability with linkages to economic output Building Ireland’s Smart Economy (2009 to 2014); economic renewal and leveraging of R&D investment

6. STEPS Dec ‘12 ‘The new policy focuses on the intended consequences of this major R&D investment. The new term that enters the R&D vocabulary is that of creating the Innovation Island. The focus now is to translate knowledge creation into economic return.’

7. STEPS Dec ‘12 Ireland aims to provide an exemplary innovation ecosystem that creates economic and societal benefits, especially the creation of sustainable jobs. An essential condition for this is a user-friendly system that enables industry and the public research sector to work well together and which encourages the commercialisation of all forms of intellectual property (‘IP’) arising from research in the public sector. “Putting Public Research to Work for Ireland”

8. STEPS Dec ‘12 Milestones Invention disclosures Patents & other IP –Filed & Granted Licenses Spin-offs Capture Protect Commercialise Increasing Commercial Criteria Case Manager

9. STEPS Dec ‘12 IP is Jurisdictional What applies in one country may not in another An Irish patent will not protect you in the UK Convergence through international treaties Multi-national Systems –EPO, WIPO

10. STEPS Dec ‘12 Patents and Publications Major way to inform scientific community of new discoveries. Wide use of Scientific Citation Index (h index). Decision to file a patent application can delay the publication Cannot immediately announce new results without some loss of patent rights.

11. STEPS Dec ‘12 What is a patent? Exclusive right for an invention o which is a product or a process that provides a new way of doing something, or offers a new technical solution to a problem In return for: o obligation to publicly disclose information First Irish Patent (May 1929) to Hannah Mary Smith “Starting cages for dogs and the like” First US patent (July 1790) to Samuel Hopkins of Vermont a potash production technique

12. STEPS Dec ‘12 What does a patent do? Protection for the invention to the owner of the patent. Limited period, generally 20 years. What kind of protection? o Invention cannot be commercially made, used, distributed or sold without the patent owner's consent o Usually enforced in a court (jurisdictional)

13. STEPS Dec ‘12 Legal Forms of IP o Patents (inventions / technology) o Trademarks (brands) o Design Rights (product design) o Copyright (text, recordings, software) o Database Rights Statutory

14. STEPS Dec ‘12 Patents – why they matter China Overtakes U.S. as the World’s Largest Filer of Patents –Posted on December 17, 2012December 17, 2012 On August 24, 2012 the jury found that Samsung had willfully infringed on Apple's design and utility patents related to the iPhone. The jury awarded Apple $1.049 billion in damages

15. STEPS Dec ‘12 - examples of IP

16. STEPS Dec ‘12 Requirements for a Patent have some usefulness (utility), no matter how trivial be novel (that is, it must be different from all previous inventions in some important way) be non-obvious (a surprising and significant development) to somebody who understands the technical field of the invention.

17. STEPS Dec ‘12 Stages in Patent 1.Initial application 2.PCT (Patent Co- operation Treaty) [optional] 3.Nationalisation 4.Examination 5.Granting Stage 4-6K 13-17K N*2K (+trans) 20-40K 0 12 30 30-55 50+ Cost (€)Time

18. STEPS Dec ‘12 Patents and Publications Patent applications can be ruined by premature publication of research. Publication = anything which has been made available to the public anywhere in the world by written or oral description, by use etc –learned papers, journals, magazines –abstracts –theses –web pages and e-mail –poster displays –exhibitions –open days –casual oral disclosure –confidential disclosures to many people

19. STEPS Dec ‘12 What to do Is there something new in results of commercial merit Discuss with Supervisor Contact Office of Technology Transfer & Meet with Case Manager Submit Invention Disclosure Form (IDF) IDF Evaluated by Case Manager for commercial opportunity Protection Secured by Office of Technology Transfer Publish

20. STEPS Dec ‘12 Michael Jackson, Singer. Patent #5,255,452 — Method and means for creating anti-gravity Illusion Abraham Lincoln, US President. Patent #6,469 — [Method of] Buoying vessels over shoals Celebrity Patents

21. STEPS Dec ‘12 IP Protection Details Maintain your Lab Notebooks o Keep good notes o Get appropriate sign-off New Inventions o Report through IDF – on TTO website – sign & send to office o Formal evaluation through TTO  Technical & Commercial o Go/no go to patent process and/or commercialisation Talk to the Tech Transfer office!!

22. STEPS Dec ‘12 IP Protection Details Material Transfer o MTA required on transfer of material o External MTA’s require review o Sign off by researcher & TTO Confidentiality o CDA required for outside discussions o External CDA require review o Appropriate documents should be marked as confidential o Researcher Undertakings

23. STEPS Dec ‘12 Conclusions Intellectual Property Rights can be Complicated Expensive Lengthy Valuable Currency of Innovation Part of all of our future

24. STEPS Dec ‘12 If in doubt say nothing, and keep saying it

25. STEPS Dec ‘12 Contact David Corkery Operations Manager Technology Transfer techtransfer @ ucc.ie O21 420 5882