Intellectual Property (IP) & Intellectual Assets (IA)
What are IP & IA and why are they important?
You might often hear the term intellectual property (IP) being used and wonder what it refers to. Maybe you know it relates to inventions but are unsure of what else it covers? Or perhaps you’re aware of copyright but not confident that you can identify copyrighted materials?
Intellectual property falls under the Intellectual Assets umbrella along with other assets such as goodwill, trade secrets, reputation, etc., and refers to creations of the mind; for instance inventions, written or artistic works, symbols, names and images used in business. All businesses have some form of IP which may be protected, for example by copyright, or through registered trademarks. IP rights allow the creators or owners of the IP to benefit financially from their work or investment.
It is worth noting that UK SMEs using IP rights report as much as 20% higher growth, income and employment than those that don't so it’s important to consider IP at the outset.
Who owns the IP in a company / academic collaboration?
Collaborative projects often generate new IP, including Innovation Voucher projects and student projects. This may not necessarily be patentable inventions but know-how, designs, test data, reports etc. As such, businesses are encouraged to consider at an early stage what intellectual assets or property may be generated from such a collaboration and make sure an appropriate agreement of ownership is in place.*
For this reason, the majority of contracts** that are put in place between businesses and Higher Education Institutions (HEIs) to deliver a collaborative R&D project include clauses that refer to intellectual property. Central to a successful collaboration is the identification of what IP is involved, at the various stages of the project, and the agreement of how this IP is managed. Three different scenarios are outlined below which will illustrate the types of outcome that may emerge:
Pulsetta, an Aberdeen based manufacturer of gluten-free bread and other bakery products, understand how important IP is to their business. They recognise the value that can be gained from properly managing their IP and advise all SMEs to consider their IP from the start.
Dr Karsten Karcher, CEO and founder of Pulsetta, said:
“Protecting your intellectual property is especially important in the food industry as people can easily copy your ideas. In terms of your ideas, I would always say IP asset protection has to come first. If you’re not protected you could lose them.”
Scottish Enterprise helped Pulsetta with an audit of its intellectual assets. The pending patents, the trademarks, the copyrights, the awards – all form part of the intellectual assets of Pulsetta.
Martin Layton, Intellectual Assets Specialist at Scottish Enterprise says, “As a business, Pulsetta has successfully built its proposition through its intellectual assets. Its intellectual property protection strategy is fundamental to underpinning its investor proposition and projected growth plan. It’s fundamental to their internationalisation strategy as well. They’re a great example of a business that is getting it right.”
Dan Medical Ltd, a computer-based medical equipment developer based in Inverness, signed a licensing agreement with the University of Glasgow's Faculty of Medicine, enabling them to bring a product to market that uses cutting edge diagnostic software developed at Glasgow.
For Ian Drysdale, Managing Director of DanMedical, working with Glasgow offered the vital missing link to getting a product to market. “We’re always pleased to see the fruits of our research used in a practical environment,” Professor Macfarlane from the University says. “The equipment developed by DanMedical is able to capitalise on the diagnostic know-how developed in our hospital lab over many years. We are delighted that a Scottish company has been able to benefit.”
Joint ownership of IP rarely occurs and requires good communication and a clear understanding of the routes to commercialisation. The Research Collaboration Agreements, as devised by the Intellectual Property Office, adopt the simpler approach that one or other of the parties will own the IP, but the result of negotiations may be that the University owns the IP in field of use "A" and the Sponsor owns the IP in the field of use "B".
The members of the Lambert Working Group on IP recommend that you avoid joint ownership where possible. If it is important that more than one party owns some IP, a better way forward may be to consider whether some of the IP should be owned by one party, other IP by another party and so on, rather than having several or all of the organisations participating in the project having a joint interest in the ownership of the IP.
**Templates provided by Interface are intended to be used as a guide only. Independent advice should be sought by the business.
In order to help you answer any questions you may have about IP, the Intellectual Property Office (IPO) has designed IP Equip - a new online learning tool that can help you understand the basics of IP. It’s free to complete and can be accessed via desktops, tablets and smart phones.
Scottish Enterprise support companies registered in Scotland, and trading at either a national or international level through the use of their intellectual asset specialists.
For any advice in relation to Intellectual Property visit: www.gov.uk/government/organisations/intellectual-property-office