Intellectual Property Management - How to capture, protect and exploit your ideas

Transcription

1 Intellectual Property Management - How to capture, protect and exploit your ideas 13 th February 2013 Gillian Davis & Julian Peck Cambridge Enterprise Limited, University of Cambridge

2 Overview Disclosure versus Confidentiality Intellectual Property Rights Copyright, eg Software Patents Technology maturity Routes to market: licensing, spin-out Key agreements Start-ups and Spin-outs Contact points

3 Research outputs Research: Grant/Contract Research outputs: Technical information, data, knowledge, techniques, processes, methods, materials, systems code, algorithms, calculations, formulae, results of experiments, designs, prototypes, records, images Commercialise Publish Confidential? Disclose

4 Intellectual Property Rights Patents protect how something works (product or process) Know-How may be confidential information Designs protect how something looks Copyright protects expression of ideas Database rights protect collections of data Trade marks protect designation of origin, reputation

5 Copyright the basics Right to control use arises automatically upon creation & is free! The work must be original For artistic, literary (software), dramatic, musical works, copyright term is 70 years from the end of the year in which the author of the work dies Can stop a third party from copying the work in any form without the owner s permission

6 Software Can the code be supplied? Copyright law: ownership- right to control use of software Person creating (University policy- copyright in software belongs to researcher unless sponsorship states otherwise) Employer under employment contract Company commissioning Identify copyright holders: authors? funding bodies? publishers? Joint or separate ownership Any third party code/open Source Software: licence terms?

7 Copyright ownership Identify all copyright holders Contact all copyright holders Get permission to supply from all copyright holders Code can be transferred to company and commercialised. What if not all parties can be contacted or do not give permission? Software can t be supplied and exploited Rewrite parts of the code Code can be transferred to company and commercialised

8 The way forward? To enable the University to use software developed in-house for future research projects and technology transfer and commercial exploitation anyone wishing to work on development of the code should be asked to assign ownership to the University. If any revenue is received through the commercial exploitation of the code each creator will be rewarded in accordance with the University s revenue sharing arrangements.

9 Third Party Software! Take care when using or incorporating Open Source software in University developed software Assess the implications of the licence terms Some Open Source licences contain restrictions or obligations that may prevent you from complying with the terms of the research funding or restrict the research and commercialisation strategy E.g. BSD licence unrestricted right to use, however any copyright or other notices in the BSD licensed materials must be preserved and maintained. E.g. GPL licence users who create any modifications of the GPL code must make their entire source code of the modification available to all third parties on the terms of the GPL. May severely limit commercialisation opportunities, but can be a great commercialisation strategy.

10 Why File a Patent Application? Invention: More likely to be developed Society: Full details published Inventor: Monopoly for 20 years

11 Anatomy of a patent A patentable invention must be: Novel Inventive (not obvious) Industrially applicable A patent confers a monopoly right over an invention for 20 years But must disclose how to implement the invention, so it is accessible to all The definition of the monopoly right is in the Claims Claims are drafted in obscure language requires the skills of a patent agent Main sections of a patent: Background Description Claims Abstract Drawings Not the same as an academic paper!

12 Commercialisation: Key considerations Inventor track record Inventor motivation IP protection FTO Market Social value Maturity New technology Ownership

13 Issues caused by lack of maturity of technology??? Lack of maturity of technology???

14 Issues caused by lack of maturity of technology Do you know whether and what to patent? Is there an established technology? Technology not fully understood? Are other inventions required? Does the technology work? Can the technology be scaled-up? Lack of maturity of technology Are there safety issues? Cost of developing viable product? Do you know what the market is yet? Desire to publish

15 Time from initial idea to viable product Initial invention: first electric light was demonstrated by Humphry Davy in 1802 wire to battery and thin strip of platinum, glowed and produced light ¾ century later and after numerous other inventions e.g. Right kind of filament Parallel circuit Improved dynamo Underground conductor network Safety fuses and insulting material Light sockets with on/off switches Time Viable product: building lit by electrical light bulbs by Thomas Edison

16 The problem of early stage research Inventor track record Inventor motivation IP protection FTO Market Social value Maturity New technology Ownership

17 The problem of early stage research Inventor track record Inventor motivation IP protection FTO Market Social value Maturity New technology Ownership

18 Commercialisation: Key considerations t Ownership k r New technology t a

19 Increasing commercial potential Research Collaboration Sponsored student Consultancy Proof of Concept funding for prototyping, technology demonstrator Research Council Follow on Funding University funding

20 Commercialisation routes Licence to existing company 1. Market technology 2. Confidentiality agreement 3. Heads of Terms 4. Licence Agreement Research Development Commercial potential Favourable key consideration New venture No existing company Inventor preference 1. Business plan 2. Raise finance 3. Form company 4. Take licence

21 Confidentiality agreement Also known as non-disclosure agreement (NDA) or Confidentiality-disclosure agreement (CDA) Purpose: a legal contract between you and another party not to disclose to anyone else confidential (i.e. not in public domain) information that you will share with them for a specific purpose. A low-cost way to share information about a new technology while preventing the receiving party from passing on this information or using the information other than for the purpose. If the receiving party breaches the agreement you can take them to court for damages A patent or registered design defines your technology more clearly and can give greater protection, but at far greater cost.

22 Heads of Terms Also known as Letters of Intent, Memoranda of Understanding or Heads of Agreement Purpose: a short document setting out the main agreed terms between parties in a commercial transaction: company A company B Clarifies understanding before time and money is spent on a detailed agreement Usually non-binding Permission Payment

23 Licence Agreement Purpose: A formal legal agreement detailing terms of a commercial transaction Key terms: Definitions Expands on Heads of Terms Confidentiality Liabilities Dispute resolution Announcements

24 You re the IP Manager! Dr B Blue Ms R Red Prof G Green Mr G Grey Dr Blue has a new invention. He s already talked to Grey Industries about it and they re interested in licensing.

25 You re the IP Manager! Dr B Blue Ms R Red Prof G Green Mr G Grey Ms Red is a PhD student on sabbatical. She adapted some code she found to work in Dr Blue s invention.

26 You re the IP Manager! Dr B Blue Ms R Red Prof G Green Mr G Grey Prof Green is the Head of Department, and Dr Blue s old supervisor. He s over the moon that Dr Blue has finally solved a problem that he couldn t.

27 You re the IP Manager! Dr B Blue Ms R Red Prof G Green Mr G Grey Mr Grey is the Technical Director of Grey Industries. He s been discussing this work for years with Dr Blue, and the new invention is exactly what his company needs to solve a big problem with their products.

28 You re the IP Manager! Dr B Blue Ms R Red Prof G Green Mr G Grey What issues do you think there may be in trying to commercialise Dr Blue s invention?

29 Why universities are involved In spin-outs? Forming a company can be the most efficient and effective way of achieving successful dissemination/commercial exploitation of a discovery An existing company does not exist poised to take the idea forward Interim development is needed in a company setting before it will be of interest to one or more commercial partners Inventor keen to start a spin-out

30 Business Plan Purpose: a document that describes a business, its goals and strategies to reach those goals. Helps to: raise finance find business partners plan your business

31 Setting expectations a lot has to go right PROBABILITY Sufficient capital 80% Management is capable and focused 80% Product development goes as planned 80% Production and component sourcing goes as planned 80% Competitors behave as expected 80% Customers want the product 80% Pricing is forecast correctly 80% Patents are issued and are enforceable 80% Combined probability of success 17% Harvard Business Review November-December 1998 AUTM Startup Business Development Primer 31

32 If you want to commercialise your technology Cambridge Enterprise exists to help University of Cambridge inventors, innovators and entrepreneurs make their ideas and concepts more commercially successful for the benefit of society, the UK economy, the inventors and the University

33 University revenue sharing from licensing technology Net Income (opt in) Inventor(s) Department(s) University First 100,000 90% 5% 5% Next 100,000 60% 20% 20% Above 200,000 34% 33% 33% * Cambridge Enterprise pay the patent costs Net income (opt out) Inventor(s) Department(s) University First 50, % 0% 0% Above 50,000 85% 7.5% 7.5% * The inventors pay the patent costs

34 Cambridge Enterprise Group

35 If you want to commercialise your technology Talk to your Enterprise Champion Tim Minshall Contact Cambridge Enterprise Phone Complete Invention Disclosure Form

36 Contact Us Cambridge Enterprise Limited University of Cambridge Hauser Forum 3 Charles Babbage Road Cambridge CB3 0GT UK Tel: +44 (0) Fax: +44 (0) enquiries@enterprise.cam.ac.uk