What is Intellectual Property?
Intellectual property (IP) is a term used to describe a creation of the mind including (but not limited to) inventions, literary and artistic works, software, designs, processes and discoveries. IP can be found in all research, regardless of the discipline. By protecting and managing IP, it becomes an asset that can help you create meaningful impact at scale from your research.
IP can be found in all research, regardless of the sector or discipline. Not sure what IP exists in yours? Get in touch and we can discuss.
Intellectual property (IP) is “intellectual” because it is creative output, and it is “property” because it is considered a tradable commodity.
IP can come from the results and outcomes of all types of research, including the sciences, technology, engineering, mathematics, arts, humanities, and social sciences.
IP is more than ideas and concepts – it is an asset with value, much like a building or other physical assets. Therefore, protecting that asset is a key part of developing and translating your research into new businesses, products, and services.
If your research is novel, it is very likely that some form of IP is being generated.
There are several different types of legal rights that protect owners of IP from others copying or stealing their creations. These rights include patents, copyright, database rights, design rights, and trade marks. Some of these rights need to be officially registered or applied for, including patents, design rights, and trade marks. Others exist automatically, such as copyright in the UK. Not all legal rights will be applicable to all types of innovations – for example, we would use a patent and not a design right to protect a technology, and a trade mark but not a patent to protect a logo.
Patents and trade secrets are very much the cornerstones of the modern knowledge-based economy, but they are not the only form of legal rights to protect your intellectual property. Ideally, you’ll create a matrix of overlapping, mutually supportive IP rights to protect your innovation. This may include a mix of patents, trade secrets, copyright, trade secrets, and other IP rights. For example, Stanford University’s PageRank patent licensed to Google disclosed a method of searching for webpages on the Internet but certain innovations (webpage weighting factors and scores, and source code) were not included and held as trade secrets. These remain unpublished and secret to this day.
Want to learn more? The UK IP office website contains a wealth of information about IP rights and how they work in the UK.
Who owns intellectual property?
Under UK law and contracts of employment, the University owns any intellectual property generated by its employees related to their employment duties. You can find out more about IP ownership and what it means for you by reading the University's IP Policy. Under-graduate and post-graduate students own the IP they create unless they agree to assign their IP rights to the University, for example as a condition of an industry sponsored PhD studentship.
The importance of confidentiality
For an innovation or research outcome to be patented, or a design registered, then it is important that you do not share it with others outside of the University before a patent is filed or a design registered. Putting an innovation or research outcome in the public domain is called ‘disclosure’. If a public disclosure has taken place for example, if you have presented your research at a conference, published a paper, or discussed it without the protection of a confidentiality agreement – then it is in the public domain and IP protection via patent filing, trade secret or design right is likely lost.
If you have an idea for a new business, product, or service, always reach out to the IP & Commercialisation team before you publish or present your idea. We can help you to understand what information should be kept confidential, and how we can protect the IP before you publish or share it with others.
What is ‘prior art’?
Prior art refers to everything that has ever been made publicly available, up to the date that a patent is filed, regardless of format, language, country, and time. In a University context, this usually means previously published patents, journal articles, and conference abstracts, papers, and posters. Understanding prior art is critical to IP, as for example an invention can only be considered patentable if it is novel and has not previously been disclosed.
What is 'freedom to operate'?
The term ‘freedom to operate’ (FTO) refers to the ability to use an innovation or IP without infringing on a third-party’s IP.
For example, freedom to operate is often used in discussions on patent rights. In this context, it means that a University patent application does not rely on the use of an existing patent right. If the University patent does rely on the existing patent right, then any licensee would need to also license the existing patent right in order to use the University patent. Establishing freedom to operate is very expensive but researchers are encouraged to explore publicly available patent databases to understand the prior art in their field.
Another consideration for freedom to operate is use of third-party materials. This situation is quite common with research that collects, analyses, and validates data from external sources, for example websites. In these cases, using publicly available third-party copyright does not necessarily mean you have the right to license it to a commercial third-party along with your innovation. It is important to consider early on and validate as far as possible that the University has the freedom to exploit all aspects of your innovation, in particular any third-party data that is used in your innovation. It may be that the University needs to secure a licence to that third-party data in order to pursue innovation & enterprise activities with your innovation.
Searching for prior art and freedom to operate
The table below outlines some of the easily accessible patent databases that you can use for prior art and freedom to operate searching.
This database is useful for general prior art and freedom to operate searching.
This database is useful for general prior art and FTO searching.
This database is useful for identifying relevant patents using Cooperative Patent Classification codes (CPC), which help to narrow down searches to a particular industry, sector, or innovation type.
This database is useful for obtaining search reports and written legal opinions of patentability, to judge the likelihood of a pending patent going to grant.
This database is useful for understanding patenting trends, which in turn is useful for understanding an innovation’s window of opportunity.
How does patenting work?
If a prior art and freedom to operate search indicates that an innovation is likely patentable, the University will invest in protecting it by filing a patent application. This form of protection is often required to interest investors and companies in innovation. However, patenting is time consuming and expensive, so it is important to consider whether it is worth patenting an innovation or not. For patent applications to be considered, the innovation must meet the following criteria:
- Novelty: the invention is not already known in the world
- Inventiveness: the invention is not an obvious modification to what is already known
- Industrial Application: the invention can be made or used – it isn’t a widget
- Allowable subject matter: the type of invention is not excluded from patentability, for instance, land mines cannot be patented in some countries
- Technical Character: the invention uses a technical effect to solve a technical problem
- Enabled: the invention must be fully conceptualised and useable when the patent expires
Inventions that meet all these criteria can be patented. This includes software and algorithms, which need special consideration but are very often patentable when they have technical character. For instance, software for calculating a pension does not solve a technical problem and therefore would not be patentable.
Below is a diagram illustrating the patent application process.
The patenting process is lengthy and expensive, as illustrated in the figure above. Firstly, a patent application is filed with a national patent office, for example the UK Intellectual Property Office. Twelve months after the initial filing, an international patent application can be filed under the Patent Cooperation Treaty (PCT). This gives the option to seek protection for the innovation simultaneously in many countries. Eighteen months after the first initial filing, the patent application will be published. A patent application then enters the national phase 30 months after the initial filing. At this stage, the selection is made of the countries in which grant of the patent application will be sought. Once a patent is granted, this gives the University the authority to prosecute any infringement in the countries where the patent has been granted. In total, patent rights protect the innovation for 20 years from the date of the first filing provided all fees are paid.
Innovations can be published in an academic journal once the initial filing is made, as long as the description of the innovation, its future development and applications included in the publication stay within the scope of the patent application filed. The IP & Commercialisation team can answer any questions that you may have about the patenting process.