When you create a new innovation, it may be made up of many elements. There may be a prototype which could be hardware or software, there may be designs or technical drawings, or there may be written guides and documentation describing a process. You may have even come up with a new name for what you have created. These are examples of elements which can be collectively captured as IP, and IP can be captured in many forms including:

Patents

A description of an innovation which would not be obvious to another expert in your field. All inventors must be listed. You describe the innovation in detail whilst capturing as many alternatives as possible. The patent is published 18 months after the first application is filed at the Intellectual Property Office (IPO), but the owner will have exclusive rights to exploit the innovation for 20 years. It is expensive but is generally considered to be the strongest form of IP protection in an innovation’s early stages.

Copyright

Automatic protection for creative works which may be literary, artistic, educational or musical. Software programs and guides or documentation are forms of copyright material. There are no costs associated with maintaining copyright, but copyright can often be easily worked around, although more difficult with complex software code.

Trade secrets

Confidential descriptions of methods, recipes and know-how are examples of trade secrets. Sometimes the best way of exploiting a new innovation is to keep the information on how to do it as a secret, so you would bind people who have access to that information with a contract to keep this information confidential.

Registered and unregistered designs

This is the description of an appearance of a product. This can be registered at the IPO to provide more protection. The fees are generally far less than for patents and the protection is more precise.

Trademarks

If you design a logo or name for a new product or service, you can protect yourself by registering it as a trademark. Only the owner of the trademark can choose how that trademark is used.

When you create an innovation as part of your job, your government department will own what you have created and it will have the right to register any protection with the IPO. However, your department fully recognises that the best person to take an innovation forward is you, the inventor, so it will work closely with you to work out what your motivations are and what to do next.

This will begin with an initial review of the IP by government department, which will consider which of the above protections could be used. The IP will also be presented to Ploughshare for review.

Many factors are taken into account when deciding how to accelerate the realisation of impact from an innovation. Currently, most of the IP we help to commercialise is licensed. A licence gives the licensee the rights to access and use a bundle of IP to make and sell products or services based on the innovation. It is usually done in exchange for money – upfront fees, milestone payments and/or royalties – paid by the licensee to the licensor. This avenue is pursued when there is an obvious licensee, such as a big defence manufacturer, with the capability and ability to exploit the innovation quickly. However, if a suitable licensee doesn’t exist, but there is still a great opportunity to create a new business that can generate commercial return and a big impact, a spin-out might be the best option with the spin-out becoming the licensee.

We will work alongside you, your fellow inventors (if there are others) and your government department to work out the best strategy for the innovation. The IP and market are considered alongside each other as they both influence the strategy. The IP factors which are taken into account include:

  • Are there any products already in use that are similar or use the same basis as your innovation?
  • How does your innovation differ from what is already out there?
  • How close to market is your innovation?
  • Is there a specific technique or process which is core to the innovation being successful?
  • Will access to specific know-how be required, such as log books?
  • Is there a need to license any IP from outside of the business (also known as freedom to operate)?
  • Has an image and brand been considered? This can quickly become a trademark and it could be registered as the brand gains traction.

The decision to protect the IP is usually made before choosing whether or not to create a spin-out; if the innovation would benefit from protection and there is a realistic chance of generating a return from doing so, the pathway, whether spinout or licence, is irrelevant. If the decision is made to register protection for the innovation your government department will cover the cost of this but you will help them with the application process. A lot of the time, the best way of protecting key elements of your innovation is to keep them as a trade secret. We will decide what strategy is best on a case-by-case basis alongside your government department.

In parallel, your government department will begin work on what the IP can and cannot be used for and by whom. This will eventually result in a Technology Transfer Pack which you can use as a guide to see what market opportunities can be pursued.

Creating a spin-out can be a lengthy and complex process, and many factors are taken into account in deciding whether it is viable, not least whether you or your fellow inventors would be keen on supporting or even joining it. We also take into account how realistic it is that funding can be found to sustain a spin-out in the longer term. Investors in certain sectors prefer more patent protection than others – they see it as a mechanism of protecting their investment. However, for software and data innovations there are often no patents protecting the innovations and investors specialising in this space are appreciative of this. Also, your innovation will probably need a lot of funding before an investor will even see it, so the decision to put the resources into getting that funding isn’t taken lightly.

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