A Guide to Intellectual Property.

How it affects your research

A guide to intellectual property and how it affects

your research
What is intellectual property?
Intellectual property (IP) refers to creations of the mind and like any form of
property it can be bought, sold, transferred. As a property, IP also needs protection
and management.
The outcome of research work is IP and generally, as governed by legislation,
intellectual property rights (IPRs) created by University employees are owned by the
University and not by the individual who created them. For students the regulations
relating to IPR ownership are set out in the University of Sheffield Calendar (see;
http://www.sheffield.ac.uk/calendar/ )

How does IP and the protection of IP affect my

research?
The protection, exploitation and commercialisation of academic ideas and IP created
during the course of research and research-related activities are an important part
of the University of Sheffield's overall strategic plan. Not all research will lead to
ideas that are commercially viable but it is important to ensure that future
opportunities are not lost e.g. through leakage to third parties, premature disclosure
or third party claims to IP ownership.

Contracts and Agreements

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 Universitys 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

Publication of research findings

The University wishes to encourage quality publications but publication may need to
be managed to meet either a funder or the Universitys own commercialisation plans.
For example it may be necessary to delay a publication until a patent application has
been filed or perhaps some commercially sensitive parts of the publication may need
to be revised. This may affect publications by students but the University will ensure
that commercialisation activity will not prevent or delay a student from undertaking
any examination.

Materials Transfer Agreements

A Materials Transfer Agreement (MTA) is required when materials (e.g. biological
materials, compounds, prototypes) for use in research are being transferred in or
out of the University on a non-commercial basis. The MTA will define the permitted
use of the material, ownership of the material and any modifications and access to
the results obtained by use of the material. If no MTA is in place then a dispute or
conflict over the use of the materials and ownership of research results may arise
and this may affect the ability to gain IP protection or to commercialise the outcomes
of your project. This is particularly problematic when combining materials from
different sources. If you require an MTA please go to
http://www.shef.ac.uk/ris/contracts/mta

How do you commercialise the outputs of your work?

Much research has the potential for commercial applications, either through the
direct outcomes of the project or through novel equipment or techniques developed
to perform the work. However, commercial potential is not restricted only to
applied research. Fundamental research also underpins future technical,
economic and social innovation,
In general a product will not sell simply because it is an invention - people will buy it
only if they have a need for it and prefer it to competing products.
New products tend to fall into three broad categories:

Exceptional products which dominate their market and set new standards.
Good but unexciting products which offer opportunities for a business to
increase its profits or its market share.
Unexceptional products which offer just one more choice among alternatives.

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/postproject/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.

Who are Fusion IP and what is the Fusion Agreement?

In order to maximise the commercialisation of IP arising from ideas and inventions
through licensing opportunities and the creation of spin out companies, the
University has entered into a partnership with Fusion IP. This Agreement enables
Fusion IP to work with the University to commercialise University IP but is not
intended to prevent the University from undertaking research activity where the
funder may require access to, or ownership of, IP arising from the funded work.
The Agreement gives Fusion exclusive rights to commercialise IP emerging from
research undertaken by the University where such IP is owned wholly or in part by
the University. In return for these rights Fusion have raised money for investment in
the Universitys IP and have issued shares in Fusion to the University.
Find out more here:
http://www.shef.ac.uk/ris/post-project/commercialising/fusionagreement.html

Tips on how to maximise the commercial potential of

your research outcomes

Keep good records of research work this can identify inventors and
timelines

Consider the commercial arena, how research can be turned into a product

Submit a COD and speak to the Commercial Assessment Team

Make sure Confidentiality Agreements are in place before any discussions take
place with anyone outside of the University

Liaise with Commercial Assessment Team to ensure appropriate IP protection

is in place

Improve ideas in first 12 months after filing as information cannot be added to

patent applications after this time

Types of intellectual property rights

Some IPRs require a formal registration (Registered Rights) whilst some arise
automatically (Unregistered Rights). IPRs provide a monopoly for the owner and can
be used to prevent others from using the owners property.
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,
Trade Secrets

know how, legal remedies will only apply if you can

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 Universitys open access corridors.

Does the invention contain an inventive step?

This means that the invention must not be obvious to a skilled person having regard
to the State of the Art. This rules out filing a patent application based upon a simple
adaptation or combination of existing products.

Is the invention patentable?

Things regarded by the law as not being inventions include discoveries, scientific
theories, aesthetic creations, inventions contrary to morality.

Is the invention industrially applicable?

An invention is industrially applicable if it can be manufactured or used in any type of
industry or agriculture.

The following are excluded from being patentable:

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
anything against public policy or morality

What about software?

A general caveat is that it is more difficult to protect software than other forms of
technology. In the US it is possible to patent protect a software program. However,
in the UK and Europe, a software program is excluded from what may be patented.
What it may be possible to protect in UK and Europe is software that does something
that provides a real technical effect within a system, product or process although it
would be the system, product or process that could be patented. Alternatively,
computer programs may be protected under copyright, so the simple authoring of
the algorithm automatically grants the author copyright in the program. This affords
only limited protection since there is nothing to stop another person writing their
own software to achieve the same result provided this is not a direct copy..

What is the process for obtaining a patent?

Applying for a patent application is a long and complex process and the University of
Sheffield always engages patent agents in this process.
An application for a patent will include a full description of the invention, a set of
claims, a short summary of technical features of the invention and the details of the
applicant. Patent claims define the essential technical features of the invention that
is to be protected. To start the process for a patent application in the UK, the
application is sent to the UK Intellectual Property Office. The date the application is
received marks the initial filing (or priority) date of the patent application.
Within a twelve month period a search must be requested. The IPO check the
application against published materials and documents to establish novelty and
inventiveness. Correspondence with the examiner usually results in amending the
specification and claims. The application will typically be published, i.e. made
publically available, around 18 months after initial filing. A more substantive
examination will follow within six months of publication and again correspondence
with the examiners may lead to modifications to the original content. This will
continue until the application meets requirements when the patent will be granted.
This typically takes 3-4 years. These time scales and procedures will alter if the

application is taken from a UK application to an International (PCT) application this

decision must be taken within 12 months from the initial application.
For further information please click here.
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 creators
lifetime plus 70 years. A copyright work may be marked with followed by creators
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.

Summary of IPR types

Term

What is
protected?

Patents

Trade
marks

Registered
Design Right

Unregistered
Design Right

Copyright

20 years
(subject to
annual
renewal
fee)
Inventions

Forever
(subject to
10yr
renewals)

Up to 25yrs

10-15yrs

Life of the
creator + 70
years

Brand
words,
logos and
other signs

What a
product looks
like, 2D or 3D
(but NOT
functional
aspects)

Products shape
or configuration,
3D only (no
patterns etc.)

Literary,
dramatic,
music,
artistic
works

Useful links

Commercialisation Team pages - http://www.sheffield.ac.uk/ris/postproject/commercialising

COD form - http://www.shef.ac.uk/ris/post-project/commercialising/codform.html

Further information on patenting process http://www.shef.ac.uk/ris/postproject/commercialising/patents

Request an Agreement from R&IS http://www.sheffield.ac.uk/ris/contracts/agreement

Fusion IP - http://www.fusionip.co.uk/

UKIPO - www.ipo.gov.uk