Intelectual property Lecture by cardiff University engineering

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1. Intellectual Property Rights and Commercialization Jael N Kanagaratnam Technology Transfer Officer Research Commercialisation Research and Innovation Services Research and Innovation Services Gwasanaethau Ymchwil ac Arloesi

2. Outline Introduction to Intellectual Property Types of IP Commercialising IP from your Research Route to Commercialisation Technology Transfer Copyright of Cardiff University 2

3. Copyright of Cardiff University 3 Intellectual Property (IP) is the product of thought , creativity and intellectual effort Ownership of IP is no different from owning any other type of property IP can be bought , sold , or licensed Intellectual Property Rights (IPR) exist to enable you to protect any IP you generate (And you will generate it, whether you are aware of it or not!) Intellectual Property

4. Copyright of Cardiff University 4

5. Intellectual Property rights 1 Lid-Patents 3 Bottle shape- Registered designs Brand name- Trademark ® 2 4 Logo font- copyright © 5 The recipe- Trade Secret 6 Unregistered designs 7 Trade Marks ™ Registered Unregistered

6. IP Ownership Innocent Smoothies v Deep End Design Innocent commissioned logo design from Deep End Design No agreement in place to assign copyright back to Innocent Lengthy court battles followed Courts finally decided in favour of Innocent Copyright of Cardiff University 6

7. IP Terms Consider what IP will be generated during the project: IP owned by the commercial partner IP owned by Cardiff University “Whoever creates owns” IP owned in a particular field Joint IP Copyright of Cardiff University 7

8. What happens at Cardiff? IP created by staff owned by institution IP protection costs borne by institution Policy on revenue sharing – inventors benefit Founder academics get shareholding in spin out Copyright of Cardiff University 8

9. IP Ownership An employer owns IP generated by its employees (1977 Patent Act) Cardiff has revenue sharing policy with employees for IP income: Students are usually not considered employees Collaboration agreements with research sponsors/collaborators normally determine IP ownership Not addressing IP ownership up front can cause problems Copyright of Cardiff University 9

10. What it Protects: What it Protects: Names or signs that indicate a product's specific geographical origin, where qualities or reputation are linked to that location.Duration : Indefinite, as long as the product’s qualities are maintained.Example : "Champagne" for sparkling wine from a region in France or "Parmigiano Reggiano" cheese from Italy. What it Protects: The aesthetic or ornamental aspect of a product, such as the shape, pattern, or color arrangement.Duration : Generally lasts 10-25 years, depending on the country.Example : The unique shape of a luxury car or the design of a specific furniture piece. What it Protects: Confidential business information that provides a competitive edge, such as formulas, processes, or methods.Duration : As long as the information remains secret.Example : The recipe for Coca-Cola or Google’s search algorithm. What it Protects: Distinctive signs, symbols, words, or logos that identify and distinguish products or services of a particular source from those of others.Duration : Can last indefinitely as long as it’s in use and renewed periodically.Example : The Nike "swoosh" logo or the name "Coca-Cola." What it Protects: Inventions or discoveries that are new, useful, and non-obvious. This includes machines, chemical compositions, manufacturing processes, and certain types of software.Duration : Typically 20 years from the filing date.Example : A patent for a new type of battery technology or a pharmaceutical drug. What it Protects: Original works of authorship, such as books, music, movies, software, artwork, and architectural designs. Duration: Usually lasts the life of the author plus 70 years, but it can vary. Example: Copyright for a novel or a song. Types of Intellectual Property Copyright of Cardiff University 10

11. What it Protects: What it Protects: Names or signs that indicate a product's specific geographical origin, where qualities or reputation are linked to that location.Duration : Indefinite, as long as the product’s qualities are maintained.Example : "Champagne" for sparkling wine from a region in France or "Parmigiano Reggiano" cheese from Italy. What it Protects: The aesthetic or ornamental aspect of a product, such as the shape, pattern, or color arrangement.Duration : Generally lasts 10-25 years, depending on the country.Example : The unique shape of a luxury car or the design of a specific furniture piece. What it Protects: Confidential business information that provides a competitive edge, such as formulas, processes, or methods.Duration : As long as the information remains secret.Example : The recipe for Coca-Cola or Google’s search algorithm. What it Protects: Distinctive signs, symbols, words, or logos that identify and distinguish products or services of a particular source from those of others.Duration : Can last indefinitely as long as it’s in use and renewed periodically.Example : The Nike "swoosh" logo or the name "Coca-Cola." What it Protects: Inventions or discoveries that are new, useful, and non-obvious. This includes machines, chemical compositions, manufacturing processes, and certain types of software.Duration : Typically 20 years from the filing date.Example : A patent for a new type of battery technology or a pharmaceutical drug. What it Protects: Original works of authorship, such as books, music, movies, software, artwork, and architectural designs. Duration: Usually lasts the life of the author plus 70 years, but it can vary. Example: Copyright for a novel or a song/ publication of research findings. Types of Intellectual Property Copyright of Cardiff University 11

12. The © symbol is recommended , but not required in the UK. Copyright of Cardiff University 12 An automatic right , no registration required Protects the expression of an idea , not the idea itself Applies to: Literary, musical and dramatic works Databases Computer software code Maps Cannot reproduce copyrighted work without prior permission copyright

13. Copyright of Cardiff University 13 1988 Copyright, Designs and Patents act – Employer is first owner Cardiff University assigns copyright back to staff for the purposes of publication only The University retains copyright on software, teaching and course material, and anything required for commercial exploitation copyright

14. Copyright Infringement Wildlife photographer sued Wikipedia for copyright infringement Courts found that these images could not be protected by copyright due to the fact that he was not the ‘author’ Copyright of Cardiff University 14

15. What it Protects: What it Protects: Names or signs that indicate a product's specific geographical origin, where qualities or reputation are linked to that location.Duration : Indefinite, as long as the product’s qualities are maintained.Example : "Champagne" for sparkling wine from a region in France or "Parmigiano Reggiano" cheese from Italy. What it Protects: The aesthetic or ornamental aspect of a product, such as the shape, pattern, or color arrangement.Duration : Generally lasts 10-25 years, depending on the country.Example : The unique shape of a luxury car or the design of a specific furniture piece. What it Protects: Confidential business information that provides a competitive edge, such as formulas, processes, or methods.Duration : As long as the information remains secret.Example : The recipe for Coca-Cola or Google’s search algorithm. What it Protects: Distinctive signs, symbols, words, or logos that identify and distinguish products or services of a particular source from those of others.Duration : Can last indefinitely as long as it’s in use and renewed periodically.Example : The Nike "swoosh" logo or the name "Coca-Cola." What it Protects: Inventions or discoveries that are new, useful, and non-obvious. This includes machines, chemical compositions, manufacturing processes, and certain types of software. Duration: Typically 20 years from the filing date. Example: A patent for a new type of battery technology or a pharmaceutical drug. What it Protects: Original works of authorship, such as books, music, movies, software, artwork, and architectural designs. Duration: Usually lasts the life of the author plus 70 years, but it can vary. Example: Copyright for a novel or a song. Types of Intellectual Property Copyright of Cardiff University 15

16. Monopoly up to 20 years Enabling, technical description Government Inventor Copyright of Cardiff University 16 Bargain between government and inventor In return for protection, the invention is published Encourages innovation, technical development and prosperity Patent protection is territorial Inventions must be industrially applicable Patents

17. What is patentable? Copyright of Cardiff University 17

18. Patent exclusions Copyright of Cardiff University 18

19. Protecting software Automatically protected by Copyright Possible to patent if the software has a technical effect Copyright of Cardiff University 19

20. Novelty Must be a novel invention, and an improvement over existing technology Searching existing public information (patent databases, PubMed, Google etc.) helps establish whether your invention is novel Unless you are covered by a confidentiality agreement, if you disclose your invention you will destroy novelty Patent, then publish! Copyright of Cardiff University 20

21. Disclosures Copyright of Cardiff University 21 Inventor Patent Attorneys CU Staff Co-inventors Anyone bound by a NDA Researchers at another institution Friends & Family Anyone not bound by an NDA Paper Conference Presentation Abstract Blog/social media post

22. = Obvious = Inventive! Copyright of Cardiff University 22 Invention must be a non-obvious improvement – there must be some innovation and imagination involved If your invention would be obvious to a ‘ person skilled in the art ’, knowing all publicly available information, then it is not inventive Inventive Step

23. Provisional Application Month 0 £2K - £8K PCT Application Month 12 £4K - £9K National Phase Applications Month 30-31 £50,000+ Granted Patents Year 4-5 Patent Expiry Year 20 Grant Fees Validation Fees Renewal Fees (£££) Copyright of Cardiff University 23 Patent timeline

24. Inventorship Inventor is not the same as Author! The person who had the Eureka moment. Not necessarily the person who carries out the experimental work. Copyright of Cardiff University 24

25. Now I have a patent… Common misconceptions: Once a patent application is submitted, it will be granted. Having a patent granted is guaranteed to make you rich A patent will stop anyone else from copying you! Copyright of Cardiff University 25

26. The Harsh Reality ! A patent is a claim to a technology Doesn’t give you the right to DO anything Commercial tool - commercial costs Even the best invention could still be a commercial flop! Copyright of Cardiff University 26

27. Why Bother? Achieve Commercial Return Investors Commercial Tool Leverage funding “Impact” Copyright of Cardiff University 27

28. Example Patent Claim “Process for manufacturing from an edible fatty medium of the character hereinbefore described (with or without other edible ingredients) an article of food or confectionery, the said process being characterised by: distributing or dispersing or producing in the material which is to be given the said cellular structure, while the material is in a fluid or semi fluid state, a very large number of small but readily visible and separate closely associated bubbles of air or other gas, and thereafter cooling the material either artificially or naturally while in such aerated condition so that it sets and forms a rigid cellular structure. Copyright of Cardiff University 28

29. Answer … Copyright of Cardiff University 29

30. Patent Example Copyright of Cardiff University 30

31. Patent Example Copyright of Cardiff University 31

32. Patent Search Databases Espacenet Google Patent PubMed Total Patent One Copyright of Cardiff University 32

33. Searching for a patent… Keywords Inventors Patent application number Classification Publication date Etc…. Copyright of Cardiff University 33

34. What it Protects: What it Protects: Names or signs that indicate a product's specific geographical origin, where qualities or reputation are linked to that location.Duration : Indefinite, as long as the product’s qualities are maintained.Example : "Champagne" for sparkling wine from a region in France or "Parmigiano Reggiano" cheese from Italy. What it Protects: The aesthetic or ornamental aspect of a product, such as the shape, pattern, or color arrangement.Duration : Generally lasts 10-25 years, depending on the country.Example : The unique shape of a luxury car or the design of a specific furniture piece. What it Protects: Confidential business information that provides a competitive edge, such as formulas, processes, or methods.Duration : As long as the information remains secret.Example : The recipe for Coca-Cola or Google’s search algorithm. What it Protects: Distinctive signs, symbols, words, or logos that identify and distinguish products or services of a particular source from those of others. Duration: Can last indefinitely as long as it’s in use and renewed periodically. Example: The Nike "swoosh" logo or the name "Coca-Cola." What it Protects: Inventions or discoveries that are new, useful, and non-obvious. This includes machines, chemical compositions, manufacturing processes, and certain types of software.Duration : Typically 20 years from the filing date.Example : A patent for a new type of battery technology or a pharmaceutical drug. What it Protects: Original works of authorship, such as books, music, movies, software, artwork, and architectural designs. Duration: Usually lasts the life of the author plus 70 years, but it can vary. Example: Copyright for a novel or a song. Types of Intellectual Property Copyright of Cardiff University 34

35. Trade Marks Trade marks are an indication of origin Distinguish one company’s goods or services from another company’s Must not be: Descriptive (‘Electronics Store’) Customary (‘Hoover’, ‘Sellotape’, ‘Aspirin’ …. and ‘Google’?) Offensive/illegal, or include protected emblems (e.g. Welsh Flag) They can be words, images (logos), or a combination of both Copyright of Cardiff University 35

36. Copyright of Cardiff University 36 Certain smells, shapes and colours are also allowable: Harder to prove association with a particular brand Trade Marks

37. Trade Mark Infringement Using a similar or identical trade mark for the same or similar goods or services is considered to be trade mark infringement Based on the likelihood of confusion between the two marks Copyright of Cardiff University 37

38. Copyright of Cardiff University 38 Comparative advertising: If you don’t use your trade mark, you are liable to lose its protection Exceptions to Infringement

39. What it Protects: What it Protects: Names or signs that indicate a product's specific geographical origin, where qualities or reputation are linked to that location.Duration : Indefinite, as long as the product’s qualities are maintained.Example : "Champagne" for sparkling wine from a region in France or "Parmigiano Reggiano" cheese from Italy. What it Protects: The aesthetic or ornamental aspect of a product, such as the shape, pattern, or color arrangement. Duration: Generally lasts 10-25 years, depending on the country. Example: The unique shape of a luxury car or the design of a specific furniture piece. What it Protects: Confidential business information that provides a competitive edge, such as formulas, processes, or methods. Duration: As long as the information remains secret. Example: The recipe for Coca-Cola or Google’s search algorithm. What it Protects: Distinctive signs, symbols, words, or logos that identify and distinguish products or services of a particular source from those of others.Duration : Can last indefinitely as long as it’s in use and renewed periodically.Example : The Nike "swoosh" logo or the name "Coca-Cola." What it Protects: Inventions or discoveries that are new, useful, and non-obvious. This includes machines, chemical compositions, manufacturing processes, and certain types of software.Duration : Typically 20 years from the filing date.Example : A patent for a new type of battery technology or a pharmaceutical drug. What it Protects: Original works of authorship, such as books, music, movies, software, artwork, and architectural designs. Duration: Usually lasts the life of the author plus 70 years, but it can vary. Example: Copyright for a novel or a song. Types of Intellectual Property Copyright of Cardiff University 39

40. Trade Secrets/Know How Also called trade secrets or confidential information Know-how is the expertise in how to accomplish a particular task. Can have indefinite secrecy over information, unlike patents Higher risk KFC® recipe of “11 herbs and spices” is held inside a vault in Louisville Half produced in one plant, before sending over to a second plant to combine the ingredients Copyright of Cardiff University 40

41. IP Portfolio All are intangible assets, but hold considerable value Copyright of Cardiff University 41 Trade Marks Brand Name Logo Copyright Font on Label Layout of Font Registered Design Distinctive Bottle Shape Patents Manufacturing Processes Vending Equipment Water Treatment Equipment Packaging (>800 patents) Know How Recipe

42. What it Protects: What it Protects: Names or signs that indicate a product's specific geographical origin, where qualities or reputation are linked to that location.Duration : Indefinite, as long as the product’s qualities are maintained.Example : "Champagne" for sparkling wine from a region in France or "Parmigiano Reggiano" cheese from Italy. What it Protects: The aesthetic or ornamental aspect of a product, such as the shape, pattern, or color arrangement. Duration: Generally lasts 10-25 years, depending on the country. Example: The unique shape of a luxury car or the design of a specific furniture piece, E.g. shape, pattern, colours, texture, materials Examples: What it Protects: Confidential business information that provides a competitive edge, such as formulas, processes, or methods.Duration : As long as the information remains secret.Example : The recipe for Coca-Cola or Google’s search algorithm. What it Protects: Distinctive signs, symbols, words, or logos that identify and distinguish products or services of a particular source from those of others.Duration : Can last indefinitely as long as it’s in use and renewed periodically.Example : The Nike "swoosh" logo or the name "Coca-Cola." What it Protects: Inventions or discoveries that are new, useful, and non-obvious. This includes machines, chemical compositions, manufacturing processes, and certain types of software.Duration : Typically 20 years from the filing date.Example : A patent for a new type of battery technology or a pharmaceutical drug. What it Protects: Original works of authorship, such as books, music, movies, software, artwork, and architectural designs. Duration: Usually lasts the life of the author plus 70 years, but it can vary. Example: Copyright for a novel or a song. Types of Intellectual Property Copyright of Cardiff University 42

43. Copyright of Cardiff University 43 Outward appearance of an article in which there exists design freedom E.g. shape, pattern, colours, texture, materials Examples: Industrial Design rights

44. No design right protection if… Copyright of Cardiff University 44

45. What it Protects: What it Protects: Names or signs that indicate a product's specific geographical origin, where qualities or reputation are linked to that location. Duration: Indefinite, as long as the product’s qualities are maintained. Example: "Champagne" for sparkling wine from a region in France or "Parmigiano Reggiano" cheese from Italy. What it Protects: The aesthetic or ornamental aspect of a product, such as the shape, pattern, or color arrangement.Duration : Generally lasts 10-25 years, depending on the country.Example : The unique shape of a luxury car or the design of a specific furniture piece. What it Protects: Confidential business information that provides a competitive edge, such as formulas, processes, or methods.Duration : As long as the information remains secret.Example : The recipe for Coca-Cola or Google’s search algorithm. What it Protects: Distinctive signs, symbols, words, or logos that identify and distinguish products or services of a particular source from those of others.Duration : Can last indefinitely as long as it’s in use and renewed periodically.Example : The Nike "swoosh" logo or the name "Coca-Cola." What it Protects: Inventions or discoveries that are new, useful, and non-obvious. This includes machines, chemical compositions, manufacturing processes, and certain types of software.Duration : Typically 20 years from the filing date.Example : A patent for a new type of battery technology or a pharmaceutical drug. What it Protects: Original works of authorship, such as books, music, movies, software, artwork, and architectural designs. Duration: Usually lasts the life of the author plus 70 years, but it can vary. Example: Copyright for a novel or a song. Types of Intellectual Property Copyright of Cardiff University 45

46. Licensing Copyright of Cardiff University 46 IP Commercialization Significant time commitment required, but direct control over products & undiluted financial rewards Important to get the right licensee, but can licence to multiple companies globally and requires less involvement New IP generated through research & teaching Identification, protection and commercial exploitation of IP Tech Transfer Spinout Company Licensing

47. Copyright of Cardiff University 47 One of the services offered by the Commercial Development team at Research and Innovation Services. “ The development of research ideas and intellectual property into commercially viable products or processes that meet defined market needs ” The Commercial Development team acts as a bridge between the academic and commercial worlds What is Technology Transfer ?

48. Technology Transfer Team Copyright of Cardiff University 48

49. Technology Transfer Process Copyright of Cardiff University 49

50. Technology Transfer Process Copyright of Cardiff University 50

51. Stage of Development Has the invention been reduced to practice? Is further funding required for prototyping/testing? Is further research required? Cost of development – regulatory requirements, clinical trials? Timescales, milestones and key deliverables must be defined to make the project an attractive proposition for investment Copyright of Cardiff University 51

52. Licensing Established business Lower risk lower return strategy Improvement vs platform technologies Can be licensed at an earlier stage (give company permission to use your IP in returns for payment) Better suited to the inventors? Licence income in the last 5 years £7M Copyright of Cardiff University 52

53. £2.4M licence income 2021/22 Copyright of Cardiff University 53

54. Copyright of Cardiff University 54 Platform technology Disruptive technology with little existing market Motivated inventor Direct control of development of product or service Financial rewards undiluted Management Team Spin-out Company Formation

55. Copyright of Cardiff University 55 What makes a good spin-out? Motivated inventor (spinout not dragout ) Demonstrated proof of concept Invention meets a compelling unmet need Large, growing market (>£100m total market) Strong IP that gives clear differentiation in the market Clearly definable route to market with attainable milestones Believable revenue model Strong business case An exit plan

56. In the financial year 2019-2020 Cardiff University ….. Copyright of Cardiff University 56

57. Thank you [email protected] [email protected] [email protected] CONTACT US

58. The Innovation Game

59. The Rules Copyright of Cardiff University 59 You play the role of the University of Abercwmboi’s Innovation & Commercialisation panel. You are tasked with assessing 4 technologies which have been presented for consideration. You should consider the potential of each case, taking into consideration the strength of the IP position, market and any issues or risks that might affect the commercialisation of the technology . Budgets are limited, so cost-benefit calculations should form part of your assessment. To assist you in making your decisions, you can commission the following reports: Intellectual property (opinion on type and strength of IP); Market (size, customer feedback); Due diligence (ownership of rights, freedom to operate, validity of agreements). Each report costs £500 and your total budget is £2,500

60. Copyright of Cardiff University 60 Review all four of the proposals and for each one decide the following: Would you back the proposal? Reason for decision What is the preferred route to market? Any issues or risks? What remedies might be suggested? (You may decided to back some, all or none of the proposals) Objective

61. Copyright of Cardiff University 61 The software will guide building designers through a systematic approach that quickly and cost effectively addresses challenging current and future carbon emission targets and the use of renewable energy technologies. It will also assist in visually communicating this process to clients and local authorities. It is a cost-effective tool that will help building designers to make choices in the early design stage and will aid evaluation of the energy and environmental performance of different building design options. The software also includes a search library that will refer users to best practice literature in low energy design. Origin – The software has been developed as a result of a TSB-funded collaboration involving a strong consortium consisting of 5 partners. The partners are: a software development company, two innovative architectural practitioners, a small design and construction consultancy and one academic expert. The objective of the project was to bring together the combined expertise of the partners to deliver the software to market. The project was governed by the standard TSB collaboration agreement. Current status – Final development and bug fixing are on-going. A potential licensee and distributor has been identified and a proposal has been tabled, offering staged payments totalling £50,000 up to release of the software. Royalties will be based on sales – 50% up to a total royalty of £2.26M, then 10% on remaining sales up to a total of £4M (aggregate). The consultant is leading commercialisation and a revenue sharing framework has been agreed. A spin-out company has been proposed as an alternative commercialisation model, but discussions are at an early stage. Invention 1 – Low carbon building design tool

62. Copyright of Cardiff University 62 Invention 2 – New oil exploration technology The invention is a method for fast direct mapping of the anomaly zones associated with hydrocarbon reservoirs below the seabed. The method is based on induced polarization effect observed in an electromagnetic field measured by vertical coinciding transmitter/receiver lines moving over sub- sea reservoirs. There are alternative approaches, but this technique is faster and more accurate and is believed to be the most important development in oil exploration in 30 years. Origin – Researchers in your Engineering department are world experts in electromagnetics. An oil exploration company approaches you to develop new techniques that could be applied to locating new areas for exploratory drilling. Status - The project was a success and, as a result of the collaboration, a patent application has been filed naming the academic team and scientists from the company as inventors. The academics are interested in exploiting the technology and the oil company is proposing a joint-venture services company to develop the technology and provide services to the oil industry.

63. Copyright of Cardiff University 63 A software package for molecular electronic structure calculations which provides highly accurate calculations whilst significantly reducing computational cost compared to existing methods. The package enables calculations on much larger molecules than with most other programs. The main application is as a research tool in Chemistry and Physics departments, although there is potential for use in pharmaceutical research and drug design. Origin – The software stems from an academics collaboration involving 5 universities from 3 countries supported by government research council funding. Status – The researchers would like to release the software and the full version is almost complete. There isn’t unanimous agreement amongst the academics as to whether to charge for the software or whether to release for free. Resource requirements for software support and maintenance has yet to be determined. Invention 3 – Molecular modelling software

64. Copyright of Cardiff University 64 Administration of drugs via the incorrect route is a source of risk to patient health. Several high profile cases, including the death of a teenage cancer patient have focused attention on problems in drug packaging and syringe design, which contribute to clinical errors and patient harm. A series of colour coded inter-locking systems designed to prevent wrong-route injection to patients. The advantage of the system over existing connectors stems from assignment of a specifically-shaped connector to a particular delivery route, thereby preventing inappropriate connection of one delivery pathway to another. Initial drawings have been produced. Origin – The initial idea was conceived at the University and developed in-house with internal funding. Status –The academic inventor has been in discussion with a medical device company which is very interested in taking the idea forward. Invention 4 – Safe drug delivery device