Guidance on patents
What is a patent?
A patent provides a legal monopoly and protects new inventions and covers how things work, what they do, how they do it, what they are made of and how they are made. It gives the owner the right to prevent others from making, using, importing or selling the invention without the patent owner's permission. Patents are intellectual property rights that may be used to preserve exclusivity in the marketplace for up to twenty years. This often allows companies to charge a premium for patented goods or services whilst their patent is in force.
What are the criteria for patentability?
An invention must:
- be new
- have an inventive step that is not obvious to someone with knowledge and experience in the subject
- be capable of being made or used in some kind of industry
exclusions from patenting:
- a scientific or mathematical discovery, theory or method, this includes algorithms, although the latter can be protected in the US, it is currently not possible in UK and Europe
- a literary, dramatic, musical or artistic work
- a way of performing a mental act, playing a game or doing business
- the presentation of information, or some computer programs
- an animal or plant variety
- a method of medical treatment or diagnosis
- against public policy or morality.
What are the benefits of patent protection?
A patent gives University the right to stop others from copying, manufacturing, selling, and importing the invention, subject of the patent, without University's permission. The existence of a patent or even a patent application may be enough on its own to stop others from trying to exploit the invention. If it does not, it gives the University the right to take legal action to stop others exploiting the invention and possibly even to claim damages.
A patent or patent application also allows the University to:
- sell, also known as assign, the invention and all the intellectual property (IP) rights
- license the invention to someone else but retain the IP rights
- discuss the invention with others in order to set up a business based around the invention.
Others may also benefit from the patent because if a patent is applied for, it is published and made available to everyone after 18 months. Others can then gain advance knowledge of technological developments which they will eventually be able to use for research.
What about ownership?
In the UK the ownership of intellectual property rights is governed by legislation, (paramount amongst these are the Patents Act 1977 and the Copyright, Designs and Patents Act 1988), and the terms of any relevant contracts (including those between the University and its employees and students, and with the sponsors of research or consultancy). In general, intellectual property rights created by a University employee shall be owned by the University. The University will normally assert its rights of ownership to patentable inventions and to computer software protectable by copyright.
The University waives its right to the ownership of intellectual property rights relating to the publication of books and articles written by employees except in abnormal circumstances, which may include where the employee undertakes the work as a commercial proposition using identifiable University resources (including the time of the employee involved) or where the revenue generated is substantial and may be related in part to the employee's connection with the University.
At all times employees shall ensure that confidentiality is maintained so that inadvertent discussion or premature publishing does not jeopardise the University's ability to protect or to exploit intellectual property. Confidentiality Agreements will be routinely used to govern contracts with external organisations and require an authorised University signatory. Members of staff shall make no commitment regarding ownership of intellectual property rights.
What about inventorship?
Only those who can demonstrate that they have intellectually contributed to the 'inventive step' (i.e. non obvious to someone equally skilled in the same area of research) can be deemed inventors, anyone instructed to confirm or obtain a stated result by experimentation or otherwise, or have prepared or provided materials, although they may contribute to the end result, cannot be identified as an inventor on a patent application.
Is there any reward for patent commercialisation?
The University has a reward mechanism, details of which can be found online. Any member of staff that is confirmed as an inventor is entitled to a share of income should the invention be successfully commercialised.
What should I avoid?
An invention must not have been made public anywhere in the world prior to the patent filing date (or priority date). Publication may include journals, books, the Internet, meetings, posters, oral presentations and conversation. Any publication of enabling information, i.e. information that would allow someone else to reproduce the work, will prevent a patent grant. In UK and Europe, therefore, if there has been prior disclosure it would not be possible to file a patent as the disclosure would be constituted as prior art, and prevent the patent ever granting. Some countries operate a so called `grace period´ of normally of one year, i.e. the ability to file a patent within one year of the date of the prior disclosure. The most important country that allows this is the USA, however, many companies with whom you might wish to try and licence the patent would not consider this to provide sufficient breadth of protection.
Insufficient agreements in place to cover collaboration:
If you wish to collaborate with your peers in other institutions, please ensure that to avoid disclosure, as outlined above, confidentiality agreements are put in place prior to any meeting or email exchange. If you need to request a confidentiality agreement, then please request one online.
Equally if you wish to take benefit from materials belonging to other institutions to use in your research, in order to avoid other institutions´ claims on any arising IP using those materials, please ensure that suitable MTAs are put in place – please request an agreement online.
In order to avoid IP leakage, please ensure that any materials sent out of the University are covered by a suitable MTA, please visit the same page as above.
Finally, asking colleagues outside the University to provide information that might result in their contributing IP to a research project should always be covered by confidentiality. So, if they are to undertake any work for the University, a suitable consultancy agreement should be put in place ensuring that all parties are clear as to who should own the arising IP.
If it doubt, please contact the Commercialisation Section in R&IS and someone will always be happy to give you advice.