Filing a patent and commercialising your research

Many thanks to Gavin Smith, Intellectual Property Development Manager from Research & Enterprise Services, who delivered a clear and informative session about filing patents, and how the University can support researchers wishing to apply for, and license patents based on their research.

Patents are formal (i.e. registered) intangible assets which give the holder a short term monopoly.

Why patent?

  • A validation that research is “novel” and “inventive”
  • A door-opener to external organisations
  • May return impact case studies
  • May return industrial income
  • May return licensing income

The complete slides are available here, courtesy of the presenter: 20160308_ResearchBites_Patents_GJSmith

Lancaster University researchers have been granted many patents. You can browse a selection on the Research & Enterprise webpage.

A granted patent confirms that the research covered is world-leading, industrially applicable, and totally novel and inventive.

Questions

If I give a talk (e.g. at a conference or in the department) and reveal an invention, perhaps in the abstract, would this be considered ‘prior art’? Yes it could, so be careful about how much you reveal, and crucially when you reveal it.

Does the Research & Enterprise Office provide template disclosures? Gavin will work with you to compose the disclosure, so please seek advice early on when considering patents.

Do patents just reward novelty? No, patents also need to demonstrate an ‘inventive step’, not just novelty. They also need to be eligible, and capable of industrial application.

Intellectual Property Office

The UK Intellectual Property Office gives comprehensive advice on patents.

Encyclopædia Britannica ImageQuest, “Otto’s Patent,” accessed 16 Mar 2016,
http://quest.eb.com/search/115_2750042/1/115_2750042/cite

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More than your h-index

Again, to those who came to this Research Bites session called More than your h-index?, which was all about author bibliometrics, many thanks for staying for a slightly longer than advertised session, and for taking part in the interesting discussions that were sparked by the presentation.

The slides are available here:

Follow on information:

Does the h-index only cover journal articles? This actually varies from source to source, and also what the h-index is in relation to. Theoretically you can use any type of work that accrues citations and calculate the h-graph based on that. Citation databases such as Scopus and Web of Science may not include every document an author has published as they have deliberate coverage policies (Scopus’ Content Coverage is available in detail. Web of Science coverage depends on your subscription and the h-index will vary accordingly). The h-index is calculated based on the items listed in the results list in either database, the majority of which are likely to be journal articles and conference proceedings. If there are letters, editorials etc in the list, they will be included, though items that were not cited at all will not affect the h-index.

Are patents covered? Although patents can be found through Scopus they are not included in the h-index. Patents (and many other things) are excluded from Google Scholar’s metrics coverage.

Thomson Reuters (prop. Web of Science) do have a product called Derwent Innovations Index, which allows patent searching and citation analysis of patents. (Possibly an interesting paper describing the h-index for patents by Jian Cheng Guan and Xia Gao).

Intellectual Property in March

Apologies for the delay in getting this onto the blog! March’s programme is all about Intellectual Property. We kicked off with Lorna Pimperton’s session on Third Party Copyright.

Filing a patent on your invention, and commercialising it
Thursday 19th March, 12.00. Charles Carter A02
Expert advice on filing a patent for your invention, and the ways that the University can support you.
Gavin Smith, Intellectual Property Officer, Research & Enterprise Service

Sharing your data with colleagues in Lancaster and other institutions
Friday 20th March, 12.00. Charles Carter A02
Find out about the services and issues around sharing your research data with your collaborators.
Graeme Hughes, Head of Faculty IT, Information Systems Services

Choosing a Creative Commons licence for your research
Tuesday 24th March, 12.00. Charles Carter A02
Creative Commons licences and how they communicate what others can do with your work.
Lorna Pimperton, Subject Librarian and Copyright Officer, Library

**CANCELLED** Non-patent Intellectual Property
Thursday 26th March, 12.00. Charles Carter A02
Expert advice on design rights, trademarks for your invention or research output.
Gavin Smith, Intellectual Property Officer, Research & Enterprise Service

***We’ll try to reschedule the session on non-patent IP soon***

As always, just turn up, no need to book. Tea/coffee and a piece of cake supplied.

Filing a Patent, and Intellectual Property Rights sessions

Research Bites have benefitted from the expertise of Gavin Smith, the University’s Intellectual Property (IP) Officer, over the last 2 weeks. He has delivered two useful sessions, which I’ll summarise. If you picked up on any points which I haven’t included, please do share them in the comments box below.

Filing a Patent on you invention and commercialising it, 4th Sept 2014

Patents are an intervention by the state into markets and a formal way of protecting your intellectual property.
The Intellectual Property Office is a comprehensive source of information, and the source of the following definition:

Your 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
  • not be:a scientific or mathematical discovery, theory or methoda literary, dramatic, musical or artistic worka way of performing a mental act, playing a game or doing businessthe presentation of information, or some computer programsan animal or plant varietya method of medical treatment or diagnosisagainst public policy or morality.

from IPO’s What is a Patent?

There is a process that needs to be followed when filing a patent, which involves making a very specific claim for what you want to protect. This includes a description containing enough detail to allow someone else to replicate your invention.

Patents operate on a ‘First to file’ basis, so the speed at which you prepare your claim is important. A patent examiner, who is an expert in the field, would then conduct a search report to see whether there is any ‘prior art’ (including your own previous work) which would prevent your patent being considered as new. They also examine your claim to make sure it is compliant and may ask technical questions about your invention.

The inventor is classed as the person with idea, not necessarily the person who made the invention. You do not need to have a working prototype in order to file a patent.

Non-patent Intellectual property, 12th Sept 2014
This session covered:

Copyright
It’s useful to consider the name of a product or business to make sure it is not already being used in your field of work. Includes registered trademarks and internet domain names.

Copyright is an unregistered right, you don’t need to apply for it, or pay a fee for it. The medium of the creative work doesn’t matter. You don’t have to apply the © symbol, but it does serve to remind people who owns the rights to the work. Copyright does not protect the idea behind the work, just the manifestation of the idea.

At the University, copyright is owned by the creator of the work, for example a journal article or book, except for teaching materials which have been developed. Copyright does give you the power of redress if someone uses your work improperly.

Design
A Design right protects the three-dimensional form e.g. coca cola bottle of an object, or the ‘two-dimensional ornamentation’ e.g. the logo, not the function. So if there is value in your design in terms of the way it looks, then it is worth considering registering a design right.

Trade marks
Anyone can use a name and the ™ symbol, but this doesn’t give you any formal rights. However, registered trade marks give you right to stop someone using your brand. If your brand’s name is considered to have value, and be known in association with the product or service, then it is worth registering.

Registered trademarks can be in different classes, i.e. the same name can be trademarked for different types of products, e.g. Polo mints, Ralph Lauren Polo shirts, VW Polo etc.

A recent dispute between Interflora vs. Marks and Spencer, where M&S had bought the Google AdWords for ‘Interflora’ so that their own florist service ranked higher in Google search results, was considered to infringe Interflora’s trademark rights, and is no longer possible to do.
Continue reading Filing a Patent, and Intellectual Property Rights sessions

Research Bites sessions in September 2014

Join us for an informal 20 minute session. Bring your lunch, and a friend.

Just turn up, no need to book.

Filing a patent on your invention and commercialising it
Thursday 4th September, 12.00. Fylde C48
Expert advice on filing a patent from the University’s Research Enterprise Service.
Gavin Smith, Intellectual Property Officer.

Non-patent Intellectual Property
Friday 12th September, 12.00. Fylde C48
Expert advice on intellectual property from the University’s Research Enterprise Service.
Gavin Smith, Intellectual Property Officer.

Beyond the Impact Factor: Altmetrics
Friday 19th September, 12.00. Fylde C48
A look at altmetrics and their growing significance to researchers
Hardy Schwamm, Research Data and Repository Manager

Your identity as a researcher – ORCID
Friday 26th September, 12.00. Fylde C48
Find out what ORCID is, and how it can help you to distinguish your work from someone else’s.
Tanya Williamson, Assistant Librarian.

Patents and Intellectual Property

Thanks to those who came along to today’s session by Jenny Brine, ‘What about Patents?’. This was a great introduction to the topic, and prompted several questions about filing patents and protecting intellectual property.

Gavin Smith from the Research & Enterprise Service has agreed to deliver two sessions in September – details of dates to be arranged.

 

First series of Research Bites have started

The first six sessions in the Research Bites programme are now being delivered throughout July.

We’ve already delivered ‘Do you need to submit an electronic thesis?’ and ‘Impact factors and all that’ and will be using this blog to provide answers to questions raised during the sessions.

These sessions are all bring held in Bowland North SR 25 at 12pm.

Coming up next:

What about Patents? Thursday 17th July 2014
Learn about the unique nature of patents and how to find them.

What you need to know about Open Access Thursday 24th July 2014
Learn why Open Access is important and how the Library can support you through it.

Social media – tools and tips for researchers Friday 25th July 2014
Get an introduction to how social media can work for you as a researcher.

Open session Q&A Thursday 31st July 2014
We’ll aim to help you get past your research barriers and answer any Library-related questions you have.