What is intellectual property?
Intellectual property (IP) can be defined broadly as products of the mind. These include written works; creative works including performances; designs and plans; inventions and prototypes; branding and trademarks; and – as UniServices’ Māori Intellectual Property Policy makes clear – traditional knowledge and methodologies.
In general, we at UniServices are the stewards of the research-informed IP of Waipapa Taumata Rau, University of Auckland. We protect and nurture IP arising from the University so the most can be made of it, both for inventors and for all those who can benefit from the ideas.
Who owns IP created at the University?
Ownership of IP created at the University is governed by the University IP Policy. The policy provides that in general, the University has an interest in IP created by University staff whereas students generally own their own IP. In practice, IP creation is usually a team affair with staff and students working together to develop the new IP.
UniServices has a number of patent attorneys on staff who can assist you to work out who has an ownership interest in the IP and to ensure that the appropriate documents to ensure a clear ownership structure are in place.
How do researchers benefit from the IP they create?
Researchers will be invited to sign a revenue sharing agreement where they share in a percentage of any profits made from commercialisation of the research.
Usually, IP will be commercialised through a start-up established by the creators of the IP. UniServices licenses any rights of the University to the IP into the company. Typically, this will be for no more than 15 percent of the equity so the inventors retain the vast majority of the shares.
Any investment from UniServices via the University of Auckland Inventors’ Fund is treated as an investment in exchange for further equity.
UniServices also has extensive relationships with industry players and investors so where the IP creators don’t want to establish a company, licensing to an existing company may be an option. In that case, the creators of the IP will benefit from the licensing arrangements, receiving a share of the returns to UniServices from the licence or other arrangement.
What is a patent?
Patents are a common way of protecting the IP stemming from an invention. A patent is an exclusive monopoly right granted by the state over a strictly defined invention. The term of a patent is 20 years from the filing date.
The principle of the patent system is that the inventor discloses their invention to the public and in return receives the state-granted monopoly over the invention.
What are the requirements for a patent?
For an idea or invention to be patentable, it must be new (novel).
This means the idea:
- Must not be publicly disclosed or used before filing a patent application.
- Must be inventive – that is, it must not be an obvious variation on existing products or publications.
- Must be sufficiently described.
What does public disclosure mean?
Public disclosure can include:
- Presentation, poster or paper at a public seminar or conference.
- Public or commercial use (e.g. selling the invention).
- Publication on the internet or in any journal, book or magazine.
If the invention has been publicly disclosed before the filing date, it is no longer novel and therefore will not be granted a valid patent.
Disclosing your idea to UniServices, to your Faculty/Institute Research Services Team or to a patent attorney is not public disclosure.
Applying for a patent doesn’t necessarily mean you can’t publish about your ideas – but you do have to get the timing right. We can give you advice on that.
The most important thing to know? Disclose your idea early and protect it before it’s too late.
What does inventive mean?
An inventive step means that the invention is not obvious. The key question to ask is: “Based on the prior art, would a person of skill in the field of the invention find the invention to be an obvious development of the prior art?”
Prior art means the body of knowledge available before the filing date.
If the invention is surprising or unexpected, this indicates that it has an inventive step. If the invention is merely a combination of knowledge that would normally be combined, this indicates that the invention is obvious (i.e. lacks an inventive step).
What does sufficiently described mean?
The patent specification must include a description of the invention that enables it to be understood and repeated.
Evidence that the invention works is also often required. If evidence is not available, it is too early to file a patent application.
Who is an inventor?
Inventorship means who is listed as an inventor on a patent application. The criteria for determining inventorship are different to those applied to determining authorship of a publication. For example, the supervisor of the person who conceived the invention is not generally an inventor.
In general, an inventor is anyone who:
- Conceived the initial idea which defined the research that led to the invention.
- Devised the experiments/materials that form the basis of the patent application.
- Carried out any novel experiments disclosed in the patent specification to validate the invention and which required that person to go beyond merely following standard protocol.
- Interpreted the data disclosed in the patent application, particularly if the data was unexpected or its implications were unclear.
Where collaborations lead to patentable inventions, the relative contribution of each collaborator should be carefully considered. Any collaboration agreements should be reviewed to assess ownership of IP.
If a collaborator is an inventor, it is necessary to confirm who owns their rights in the invention. Typically, this will be the institution they work for.
In such cases, an agreement should be signed between UniServices and the inventor’s institution to clarify ownership.
Third parties may also be inventors. This can include contractors, consultants or service providers. UniServices employs several patent attorneys who can assist in determining inventorship.