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IP Primer Booklet Final
IP Primer Booklet Final
Research agreements
A research agreement will include clauses defining the ownership and rights of use of
existing IP and IP that will be created from the research programme. Some funders
(such as Research Councils) have standard non-negotiable terms but for sponsors
such as an industrial party, we would expect to negotiate terms on a case by case
basis. It is also always advisable whenever collaborating with any third party to have
an agreement defining the terms and conditions under which the work will be
carried out in place. The terms in research agreements will be negotiated by the
Pricing and Contracts Team in Research and Innovation Services
(http://www.shef.ac.uk/ris/contacts/pact.html)
If you are engaging a third party to provide a service for you (e.g. to write software,
provide drawings or designs) you should ensure that there are written terms and
conditions in place that cover who has ownership of any outcomes of the project. If
you do not have such an agreement in place then the third party may be in a position
to claim ownership of the outcomes and any resulting IPRs and so the ability to
commercialise the project outputs could be compromised.
Confidentiality Agreements
Uncontrolled disclosure of information, drawings, prototypes etc. may have an
adverse effect on the commercial potential of your ideas (e.g. loss of IP protection)
or on your future research work (e.g. someone uses your ideas). The most obvious
form of disclosure is publication in a journal or presentation at a conference, but it
also includes informal discussions with people outside the University, information on
your personal webpage, seminars or presentations with external visitors present and
even posters in the University‟s open access corridors.
To avoid disclosure you should ensure that a Confidentiality Agreement (CA) also
known as a Non-Disclosure Agreement (NDA) is in place before discussions with
anyone outside of the University. If this is not done it may prevent a future patent
application being filed, and there are examples where discussion outside of the
University has led to other parties benefiting from research performed, or ideas
created, here. If you require a CA please go to http://www.shef.ac.uk/ris/contracts/nda
Technology or other innovation is the basis for new products in the first category. As
would be expected, these have the greatest potential commercial value, but they may
also require correspondingly greater effort to become established in the market.
Products in the second and third categories therefore have an easier or quicker
route to market, and so are also commercially attractive.
If you have an idea that you believe may have potential commercial value, the first
step in the process is to register the idea via the web-based Commercial
Opportunities Disclosure (COD) form http://www.shef.ac.uk/ris/post-
project/commercialising/cod-form.html and a member of our Commercial
Assessment Team will contact you to discuss taking the idea forward. The COD form
does not need to include full details of how commercialisation will be achieved, nor
does submitting a COD irrevocably commit you to commercialisation as opposed to
e.g. taking the work forward by collaborative research.
• Consider the commercial arena, how research can be turned into a “product”
• Make sure Confidentiality Agreements are in place before any discussions take
place with anyone outside of the University
The term of protection and registration requirement varies for each type of IPR and
examples of the main IPRs in each category are:
Registered Rights
Patents new products, processes, apparatus, new uses of
known products
Trademarks ® - protect origin of manufacture (TM can be used
where the trademark is unregistered)
Registered Designs protect overall visual appearance of a product or a
part of a product
Unregistered Right
Unregistered Design Rights stops anyone from copying the shape or configuration
of a product, 3D only
Copyright © - protects literary, dramatic, musical, artistic -
aesthetic works
Confidential Information, know how, legal remedies will only apply if you can
Trade Secrets prove information actually is confidential
More than one type of IPR usually subsists in an article and a combination of IPRs,
including for instance more than one patent, may be possible for different concepts
in the same article and may be used to give the best protection. For example a
product may contain parts protected by multiple patents, its look and appearance
may be protected by design right and it may carry a trademark.
Some more detail about these key IPRs is given below:
Patents
A patent 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 and will describe a
product, process, apparatus or use. Software is only patentable if claiming a
technical effect.
A patent is a contract between the State and the Patentee and grants a legal
monopoly right. It does not confer the right to do an act but to prevent others from
doing it, i.e. it will allow you to prevent others from commercialising your invention
without your permission. A patent (or a patent application) can be bought, sold, or
licensed in a similar manner to other types of property and is it through such sale or
licensing that income will be made.
What types of invention are patentable?
In order to seek patent protection the invention needs to meet various criteria as
described below:
Is the invention new? (the “novelty test”)
An invention is considered to be new if it does not form part of the “State of the Art”
where State of the Art means everything made available to the public by means of a
written or oral description, by use, or by any other way before the application date of
the patent.
Everything does mean „everything so once an invention has been disclosed to the
public in any form the opportunity to file a patent application will most likely be lost.
The most obvious form of disclosure is publication in a journal or presentation at a
conference but it also includes informal discussions with people outside the
University, information on your personal webpage, seminars or presentations with
external visitors present and even posters in the University‟s open access corridors‟.
All interactions with patent agents, whether informal enquiries about patentability or
the giving of instructions to prepare and file an application must be authorised and
administered by the Commercialisation Section of Research and Innovation Services.
Trade marks
A trade mark distinguishes goods and services from one supplier to another. Any
sign capable of being represented graphically which is capable of distinguishing
goods or services of one undertaking from those of another can be registered as a
trade mark. It could, for example, be a stylised word or a logo or a combination of
both. Trademarks need to be distinctive for the goods or services but cannot be
descriptive or laudatory; in other words cannot describe the goods or services. Only
registered trademarks may use the ® symbol to indicate that it is registered.
There is no „novelty‟ requirement – the trade mark can already be in use before
registration is applied for. To register a Trademark in the UK it is necessary to apply
to the Intellectual Property Office and likewise for overseas Trademarks. Any
interaction with regard to filing a Trademark, be it seeking advice or applying to
register a trademark must be authorised and administered by the Commercialisation
Section of Research and Innovation Services.
Registered Designs
Designs protect the outward appearance of a product including decoration, lines,
contours, colours, shape, texture and materials and registering a design gives
exclusive rights for the look and appearance. A new shape or pattern for a product,
may be protected as a design but it must be must be “new” and have individual
character.
To register a design in the UK it is necessary to apply to the Intellectual Property
Office. The IPO will examine the application and decide if the application is
acceptable. If not there is a chance to discuss the objections with the examiner to
see if the objections can be overcome. Any interaction with regard to registering a
design, be it seeking advice or applying to register a design must be authorised and
administered by the Commercialisation Section of Research and Innovation Services
Copyright
Copyright can constitute a valuable asset for its owner. Copyright is an automatic
right which does not need to be formally applied or paid for and it arises as soon as
the work is „fixed‟ or turned into something tangible e.g. written down (papers,
databases etc.), recorded (e.g. a piece of music), a piece of art created (photograph,
sculpture etc.), or stored in a computer memory.
Software is protected by copyright as it is a written work. It is currently difficult to
patent software unless there is a “technical effect”.
Copyright in literary, musical, artistic and dramatic work lasts for the creator‟s
lifetime plus 70 years. A copyright work may be marked with © followed by creator‟s
name and the date to indicate when it was created and by whom e.g.:“©University of
Sheffield 201X”.
Unregistered Designs
“Design right” gives free automatic protection for the internal or external shape or
configuration of an original design. This stops anyone from copying the shape or
configuration of a product, i.e. making a “slavish copy”. It does not offer protection
for any 2-dimensional aspects, for example patterns (these may be protected by
copyright or registered design right). Design right lasts for 10 years after the first
marketing of products that use the design or 15 years after creation of the design,
whichever is earlier.
Useful links
• Commercialisation Team pages - http://www.sheffield.ac.uk/ris/post-
project/commercialising
• Fusion IP - http://www.fusionip.co.uk/
• UKIPO - www.ipo.gov.uk