The Ignite Technology Transfer Office (TTO) is a high performance team that guides breakthrough NUI Galway research to business reality. This portal provides external information to Industry and Investors wishing to avail of TTO services and commercialisation opportunities, as well as internal information such as policy and process to NUI Galway research community.
Services for researchers
1. NUI Galway IP Policy
NUI Galway with primary concern for the education and training of students and the advancement, preservation, and dissemination of knowledge recognises that the various activities of its academic staff, students and employees may produce patents, copyrights, and inventions which further support these goals. The purpose of this section is to set out an Intellectual Property Policy for the University to cover patents, copyright, and inventions arising in the course of academic activities. This Policy is intended to encourage staff to develop and to protect ideas of possible commercial significance by means of established channels.
Policy on Intellectual Property
This policy provides a mechanism for bringing University inventions into the public realm and promote maximum utilisation of such inventions for the greatest possible public benefit (see attached Policy on Intellectual Property for National University of Ireland, Galway (full version). (PDF 129KB - opens in a new window)
2. Types of Intellectual Property
Core to commercialisation is the generation and execution of Intellectual Property (IP) which is supported through the Ignite TTO. The Ignite TTO team works internally with technologists in the generation and protection of IP, defining project plans and putting in place the foundations to guide the technologist along a commercialisation path.
The Ignite TTO team delivers a key message to the academic environment: “To get an innovation to market you must do more than just develop a technology that works – you must ensure your invention meets a genuine market need, protect it & exploit it.”
IP is the general term for intangible property rights which are a result of intellectual effort. IP refers to creations of the mind, including inventions, patents, know-how and trade secrets, literary and artistic works and other copyright-protectable material (e.g., software), symbols, names, images, and designs used in commerce. It is important to protect IP for the following reasons:
· Contributes toward the development of a knowledge society
· Attracts and protects investment
· Ensures good return on development costs
· Promotes innovation
· Creates barriers to entry
· Generates licensing income
According to the Irish Patents Office, a “patent confers upon its holder, for a limited period, the right to exclude others from exploiting (making, using, selling, importing) the patented invention except with the consent of the patentee.” A patent, as a form of industrial property, can be bought and sold, licensed or used by the owner either in whole or in part. A patent is a monopoly right conferred by the government giving the patent holder the right to stop others making, using or selling an invention in the particular country or region where the patent is granted. Figure 2 outlines the criteria required for patenting.
Bearing in mind the importance of confidentiality and the early stage requirements for non-disclosure (Section 6.1), an internal Invention Disclosure Form (IDF) should be completed on consultation with the Ignite TTO. Depending on the technology (and the availability of funding), an initial patent application can be filed quickly at a relatively low cost in order to pursue protection of the invention.
It is worth noting, however, that the following types of innovation are specifically excluded from patent protection:
· a discovery, scientific theory or mathematical method
· a literary, dramatic, musical or artistic work
· a scheme, rule or method for performing a mental act
· playing a game or doing business
· inventions encouraging offensive, antisocial or immoral behaviour
· certain animal, plant or biological processes
· methods of treatment or therapy of the human or animal body
· computer programs (subject to exceptions for certain computer-implemented inventions)
Requirements for Patentability
Know-how relates to confidential technical information, formulae, trade secrets and other confidential and proprietary information relating to a technology, product or business, whether current or in development. For example, know-how may comprise the scientific expertise and secret technical information required to implement an invention. Like other forms of intellectual property, know-how can also be licensed for a fee. To do this, however, and to protect and maintain rights in know-how, confidentiality, and disclosure only in controlled circumstances, are essential.
Copyright is a legal protection that applies to a number of categories of original work, principally the traditional "artistic" categories of literary, dramatic, musical and artistic works, and categories of work which approximate to these traditional categories. Among the latter are computer programs, which are given written expression in specialized languages and are, therefore, protected as "literary works"
(note as a software concern this only protects against copying). Copyright provides the owner of the work with control over the use of the work, including the right to prevent others from copying or adapting the work. The life of copyright protection depends on the type of work. For example, in Ireland the copyright in literary, dramatic, musical and artistic works expires 70 years after the death of the author. As with know-how, there are no registration requirements for copyright protection and, therefore, there are no registration fees involved.
A trade mark is the means by which a business identifies its goods or services and distinguishes them from the goods and services supplied by other businesses. The Trade Marks Act, 1996 defines a trade mark as "any sign capable of being represented graphically which is capable of distinguishing the goods or services of one undertaking from those of other undertakings." A trade mark generally protects brands and acts as a badge of origin for a particular product or service. It can consist of words, personal names, letters, numerals, designs, logos, three-dimensional shapes or the packaging of goods and even sounds and colours. There are certain statutory requirements for a trade mark to be eligible for registration, in particular the trade mark must be distinctive and not descriptive of the goods or services to which it is applied, or any character or feature of those goods or services. The term of registration lasts for ten years from the date the application was first filed, which may be renewed for consecutive ten year periods once the necessary filing requirements and renewal fees are attended to.
DESIGN: REGISTERED & UNREGISTERED DESIGNS
Design refers to the appearance of the whole (or part of a) product resulting from the features and in particular the lines, contours, colour, shape, texture or materials of the product itself or its ornamentation. Under the Industrial Designs Act, 2001, a "product" means “any industrial or handicraft item, including parts intended to be assembled into complex product, packaging, get-up, graphic symbols and typographical typefaces, but not including computer programs.” Unlike patents, design rights protect the visual appearance of the product only, not its functionality. In order to be registered as a design it must be new and have “individual character.” So long as these requirements are met, registered design rights last for five years and may be renewed in that country or region for consecutive five year periods up to a maximum of twenty-five years. In Europe, a system exists for the protection of unregistered Community designs. This protection is limited in time to three years from the date the design was first made publicly available.
3) Best Practice
a) Best Practice in Intellectual Property
Publication Protocol – Enterprise Ireland Commercialisation Fund
Please note that for anyone who holds an Enterprise Ireland (EI) Commercialisation Fund grant that there are stipulations there-in in the Research Contract between NUIG & EI governing protection of Intellectual Property (IP) and publication of material / research findings containing IP which arises in whole or in-part from such grants.
It is important not to disclose any research findings in a public disclosure format which contains IP not protected by patent applications. Such publications includes publications in scientific journals, abstracts, conference presentations & proceedings, web-based information, thesis in library, open source software and any other form of public disclosure and verbal communications to external parties.
As a guide please download the following publication protocols:
- Commercialisation Fund Publication Protocol (PDF - opens in a new window)
National Code of Practice for Managing Intellectual Property
In April 2004 the Irish Council for Science, Technology & Innovation published a National Code of Practice for Managing Intellectual Property from Publicly Funded Research. The code addresses each aspect of the management and transfer of research and development results from universities, institutes of technology and public research institutions to the commercial market place. Full details of this code are available from: National Code of Practice for Managing Intellectual Property from Publicly Funded Research
The following list outlines the key points for new companies to consider for best practice in IP:
· Treat IP as an asset with real financial value
· Review information and identify what IP exists: create an IP strategy
· Ensure IP strategy is a lead element of business strategy
· Systematically review IP portfolio
· Ensure all information is recorded and properly documented
· Carefully preserve confidentiality of new invention at least until a patent application is filed
· Use appropriate markings, e.g., “patent pending,” TM or ® symbols
· Use copyright notices on documents, software, web pages, databases
· Identify and mark confidential information as confidential
· Gather market intelligence: avoid infringement of competitor’s IP
· Monitor competitive activities in the field and, as appropriate, enforce your IP by pursuing infringers
· Engage with a reputable patent attorney
b) Best Practice Lab Notebooks
It is essential to keep thorough records of experimental work as part of good practice in relation to undertaking research and also in terms of filing of patent applications. These records should be kept in a secure place at all times will the research is being carried out. At a future date it may be necessary to return to notebooks to prove the date of an invention and its reduction to practice. In some cases laboratory notebooks may be required to be presented as legal evidence.
GUIDELINES FOR KEEPING LABORATORY NOTEBOOKS
Laboratory Notebooks should be available from and administered from a central coordinating office in your institute / department.
Each Laboratory Notebook should be given a number and is assigned to a particular project on receipt from the central co-ordinating office.
Only one project should be entered into each Laboratory Notebook.
The person to whom the laboratory notebook is issued to is the only person who should enter data in that laboratory notebook.
Pages should NOT BE REMOVED OR REPLACED from laboratory notebooks.
SIGNING FOR THE BOOK
The researcher must sign and write the date of receipt of the book on the inside cover.
SIGNING DAILY ENTRIES AND OBTAINING WITNESS SIGNATURES
Entries should be dated and signed by the researchers on the day the work is performed.
If the laboratory notebook may be used in support of a patent application, only the person to whom the notebook is issued may make entries.
Entries should be legible, neatly kept, and understandable to a co-worker.
For verification of work, all original notebook entries require prompt witnessing (eg; daily, weekly, etc, as dictated by departmental policy). Witnessing includes a signature and a date. The person who witnesses the notebook entry should be aware of and understand the work conducted. If for patent purposes, the witness should be someone who will not be a co-inventor. The witness should not be engaged in the project that is the subject of the notebook entry.
Enter all research data directly into the laboratory notebook where possible.
Do not erase or use correction fluid. Strike out errors with a single line or neat + through the mistake so that it still may be read; enter the corrected word(s) or value(s) above the error, as well as the reason for the correction. Initial and date all corrections.
Making entries in permanent black ink will facilitate legibility, photocopying, and microfilming. Rubber-stamping, eg; to create spaces for protocol numbers of raw data location, should also be in black ink for legible reproduction and microfilming.
Leave at least a half-inch margin at the inside (bound) edge of each page, to facilitate photocopying and microfilming. As much as possible keep entries inside the printed margins of each page.
Any unused pages or portions of pages must be closed out with a diagonal line. Never skip pages with a diagonal line. Never skip pages with the intention of returning and filling in data at a later date.
ORGANISING DATA - ORGANISING ANCILLARY DOCUMENTATION
One project only may be in one book. Researchers should maintain running indexes within each book, including date, experiment number, objective / subject and page number.
When beginning a new book, the researcher should enter a cross-reference to the last notebook used (eg; “Continued from Notebook Number: ______________”). Likewise when a book is closed out, a cross-reference to the succeeding notebook should be entered (eg; “Continued to Notebook Number: ______________”).
When starting a new page, always enter the title, project name / number, and date. Only one date should be used per page.
For patent purposes, new experiments should always be started on a new page and dated at the onset of each experiment. The purpose / objective of the experiment should be clearly stated.
If the experiment carries over more than one day, each entry must be dated and continuation pages must be clearly annotated. For patent purposes, each page should not contain entries for more than one day.
Only if absolutely necessary should new entries be added to previous pages, when subsequent work of later date is already recorded on succeeding pages. Backdating of these entries is strictly prohibited. Use the current (actual) date of entry.
Keep the Table of Contents or Index current.
If at all possible, supporting data should be affixed into the notebook. Attach inserts (folded graphs, raw data tables, or computer printouts) with transparent tape, or approved labels. Care should be taken so that the tape covers no data and that inserts are not affixed in such a manner as would later hinder photocopying or microfilming of all the data and observations on the page. Initial across both the insert and notebook page.
Some form of a binder, notebook, folder, or envelope must be used for organisation and traceability of ancillary documentation (raw data sheets and other supporting documentation that cannot feasibly be incorporated into bound notebooks, but are needed as permanent record of specific experiments).
In all cases, ancillary documentation must be cross-referenced to the appropriate notebook number and page and vice versa. Additional information, such as the project name / number, study name, device used to collect data, date of collection, researcher’s name, etc, is also helpful.
Specify computer programs used to perform calculations on raw data (not fully described in the study protocol or method) in the laboratory notebook. Source codes are not necessary, but indicate the nature of the calculations.
RECORDS FOR PATENT PURPOSES
The importance of keeping careful, accurate records of laboratory work, to prove inventorship and to assist in preparing the patent specifications which, by law, must describe the invention, cannot be overemphasised. Dependence on memory or scanty notes for this purpose may result in an invalid patent. Any record may serve as evidence to prove inventorship, but the laboratory notebook is the most important.
Describe methods in detail or by reference to an approved protocol, standard operating procedure or method of the date of a previous notebook entry at the beginning of the experiment.
Keep entries factual when reporting an experiment. Note and record all unusual or interesting observations during and experiment separately, under a heading of “Observations”. Premature or hasty statements such as “ an experiment was unsuccessful” should be avoided. If recording an idea to be worked on later, be full in your discussion; use general language, state equivalents, etc.
Keep entries up-to-date. While the making of entries directly into the notebook has disadvantages, as thing are apt to be spilled in the open notebook, it is always preferable. Advance attention to planning the experiment will give a clearer, more intelligible record.
Make the entries complete, so that one skilled in the art would be able to repeat the work without asking questions. The procedure should be clearly stated in express words or by reference.
Record the findings regarding a compound’s/cell line/molecule/other reagents etc activity in the notebook at the end of each experiment. The result, clearly set forth, should be supported with some sort of analytical data.
Do not describe an invention or name an inventor in the findings. Enter a conception on a separate page in the notebook, or keep a conception notebook.
CLOSING OUT NOTEBOOKS
Laboratory notebooks one year or older shall be closed out during the annual microfilming cycle.
Notebooks not being used for frequent reference are to be returned to the Laboratory Notebook site coordinator or Central Administrator. If a notebook is being returned with unmarked pages, write “Notebook closed; no further entries”, following the last recorded data. Date and sign the page.
Final page should be crossed out, signed and witnessed.
For more information on guidelines to recording information please download the following documents:
4) gENERAL STAGES OF A PATENT APPLICATION
|Patent Application filed in appropriate territory|
|12 months||Complete the application requirements in the appropriate territory and attend to the filing of foreign patent applications (if any), e.g., by filing an international (PCT) patent application or by filing a European patent application (New technical material can be added up to this stage, but no later)|
|18 months||Application published with Search Report (at this stage anyone can obtain copies of the Patent specification)|
|2 to 4 years||
Examination report received, ongoing correspondence and negotiations involving local and foreign patent attorneys and examiners in relation to the wording, scope and validity of patent claims
|3 to 5 years||Patent granted (or refused)|
|4 to 20 years||Annual renewal fees due|
The precise timescale depends on the country and on whether the European Patent Office, Patent Co-Operation Treaty, or national patenting routes have been used. Some countries' national routes differ from the above general outline.
5. useful links on intellectual property
· TTO website (www.nuigalway/tto)
· Irish Patent Office (www.patentsoffice.ie)
· UK Patent Office (www.ipo.gov.uk)
· World Intellectual Property Organization (www.wipo.int)
· European Patent Search Engine (gb.espacenet.com)
· Delphion (www.delphion.com)
Patent Search Engines useful links
Find out more
E technologytransfer@ nuigalway.ie
T 353 (0)91 492147
F 353 (0)91 526388