Intellectual Property Rights

And starting a new business….

Brendan Spillane
Warwick Ventures Limited
24th January 2017 from Innovation to Impact
Programme
Introduction to Warwick Ventures
What is/are IPR?
What’s it got to do with Starting or Running a
business or writing a business plan?

from Innovation to Impact

Warwick Ventures Ltd
We derive Impact from the University’s
intellectual property (IP) from its research
A service for academics -- and other
University innovators
A source of opportunities for industry

Our Goals:
Impact
Reputation
from Innovation to Impact
Financial Return
Our Impact Service

Identify impact opportunities

Define, protect and manage the university’s
intellectual property
Find/apply Translational / Proof of concept
grants
Identify the Market, Develop an exploitation
route
– Licensing
– Spin-out companies
Our Commercialisation Service
Market opportunities to industry; OR
Build Spin-out Companies
Business Plan
Management team
Pitch
Find partners, raise finance & grants,
negotiate contracts, manage the process
Exit and/or Distribute the proceeds
Our Student Enterprise Support
Liaise with Warwick Entrepreneurs Society
Part of Warwick Enterprise Partnership
We have directly supported Student ventures
We have a Software Incubator for Students
and others.
We are working with national ICURe scheme
for Post-grads and run Wi2i courses internally.
WVL’s service
100 Ideas a year (Over 1000 total)
18 licences a year (£2m)
35 Patents a year filed (300 total)
3 spin outs a year (65 total, raised £50m)
Also (occasionally) support undergrads new
business
Raised £4.2m for one, another had turnover
£5.5m in first full year of trading.
Warwick i2i – We don’t just talk
3 postgrads - £500k each for their new
companies in 2016 … so far
Opportunity Assessment
Commercial Opportunity Appraisal Process
(COAP)
Document: background, invention, market and
next steps
Objective scoring tool
Peer review in weekly meetings
Further review at every cost point
COAP Scoring
A guide for prioritisation of Ideas
TECH OPPORTUNITY SCORE MARKET OPPORTUNITY SCORE WV OPPORTUNITY SCORE

UNIQUENESS VALUE REPUTATION /20

READINESS EDGE WU VALUE
TECH DEVELOPMENT MARGIN WU SUCCESS
ACADEMIC CONSERVATISM WU TIME
RELEVANCE ROUTE-MARKET WV EXIT
/25 /25 WV COST
WV ADDED VALUE
LICENCE (+) OR SPINOUT (-) /50
 What is IPR?

IP

images: www.freeimages.co.uk
Why do you need to establish
IPR?
To prevent other parties making financial gain
from your invention without your permission.
Having a temporary monopoly that provides first
mover advantage.
System also forces publication so that inventions
are not kept secret and die with the inventor.
Even if you have no desire to make money, it can
protect your position and safeguard your future
rights.
Helps establish title.
Why do you need to establish
IPR?
Countries that encourage IP protection have
benefits in economic growth.
30-40% of US gains in productivity and growth
are due to innovation.
IP intensive industries produce 72% more value
added per employee than non IP intensive
industries.
Job creation is 140% higher.
(Burns 2011:131-2)
Before you get sued!!!
It works both ways. Does someone else have
protected IP you are infringing?
Before you spend a lot of time designing a
product or coming up with a design or a company
or brand name, check someone else hasn’t
already registered it. Do a search.
Understand the ‘landscape’ around your IP so you
don’t step into a legal challenge.
What is Intellectual Property?
and how do we protect IP? (hard)
Patent: inventions – file application at the Patent
Office, if granted and renewed provides 20 years of
protection.

Trade Marks: names, logos and slogans – file

application with the Patent Office.
Unlimited duration if renewed every 10 years.

Plant Breeders Rights: new plant variety, file

application with The Food & Environment Research
Agency (FERA).
Protection for 25/30 years from date right is granted.
What is Intellectual Property?
and how do we protect IP? (soft)
Copyright: software, artistic and literary work – arises
automatically, but can also be registered.
Provides protection until 70 years after the author’s
death, or 50 years from publication.
Database Right: for original selections and arrangements
of contents.
Provides protection for 15 years from making or
publication.
Design rights: designs for a commercial purpose – arises
automatically, but advisable to register.
Protection for up to 25 years.
Know How: a general term for everything in your brain; a
trade secret – keep confidential
What is Patentable
From the European Patent Office :
……..patents shall be granted for any inventions which
are susceptible of industrial application, which are new
and which involve an inventive step.
New or Novel: Inventive Step:
An invention is new if it is not Has to be non-obvious to
part of the state of the art someone ‘skilled in the art’
“State of the art”: everything Beware of hindsight analysis
available to the public before
filing date
Patent Process
Can be self filed for price of a stamp, but inadvisable
Patent attorney’s charge ~ £2.5k to file, but more
costs follow
Filing ‘starts the clock’, protection for 20 years and
publication in 18 months
Be clear why patent needed, what product are you
trying to protect
Granted maybe, eventually
What is Not Patentable
Discoveries
Scientific theories
Mathematical methods – software???
Surgical techniques
Thought processes
Technologies contrary to national security
Patent Process Timeline
Day 1 – File GB application (priority date)

12 months – File international PCT application

18 months – Publication

30 months – File national application in every

country where you need protection:
Develop; Manufacture; Export; Sell
The ‘Golden Rules’ for Patents
Patenting requires novelty and inventive step ie
non-obvious
You can be your own prior art!
Keep idea secret but documented
Remember that ‘know-how’ is valuable
Publicly disclose AFTER patent filed
Beware on line publishing
Trademarks
Trade Marks Act 1994 Section 1 (1):
“Anything capable of being represented graphically which
is capable of distinguishing goods or services of one
undertaking from those of another”

BUT NOT:
‘The Coffee Shop’
‘The Cocaine Dealership’
Nyke footwear
FCUK is registered but only for some groups of product &
service, i.e. not in group 10 – marital aids; and certainly
could not register FCUKING
Trademarks
Brands and Straplines – “because you’re worth it”
“because life’s complicated enough”
“exceedingly good cakes”
Logos –
Shapes –
Colours –
Smells –
Gestures -
….the 1994 Trademark Act
broadened the possibilities to
include…
Shapes – but not (the size of the hole!)

Colours – Green (BP); Turquoise (Heinz Beans)

Sound - Direct Line Jingle, Intel Jingle

Trademarks
Even gestures can now be
trademarked…
and maybe?
Copyright
Copyright protects creative or artistic works:
Literature (including novels, instruction manuals,
computer programs, song lyrics, newspaper articles,
website content and databases)
Drama (including dance or mime)
Music
Art (including paintings, engravings, photographs,
sculptures, collages, architecture, technical drawings,
diagrams, maps & logos)
Recordings/broadcasts of a work, including sound and film
Copyright
Copyright is internationally recognized, automatic, and comes into
existence upon creation of the work.
Copyright work is often marked with the © symbol, the name of the
copyright owner and the year of publication, but this is not essential.
Confers an exclusive right to exploit the work (i.e. sell it, reproduce it,
give others permission to use it) but not if you are an employee.
Copyright timescales:
Literary, musical, artistic
Author’s lifetime + 70
& dramatic works
years

Films, TV, radio & cable Date of publication + 50

years
Copyright violations:
Original literary works – plagiarism
eg. Demi Moore and Naked Gun
Copyright violations:
Original dramatic, music and artistic
works –
The Verve took 4 bars of a Rolling Stones Song, they
were taken to court and had to handover all royalties
and credit to Mick Jagger and Keith Richards.

George Harrison and My Sweet Lord and He’s So Fine;

Harrison lost in court who decided they were
composed by Ronald Mack.
Design Rights
Registered design rights cover the outward appearance of
an article
Design has to be ‘new and materially different’ e.g. usually
applies to fashion, jewellery, and furniture designs but also
white goods (e.g. Dyson vacuum)
Lasts 5 years but can be extended to 25; £60 registration
fee
Unregistered design rights apply automatically but last
only 15 years
If you are commissioned or an employee then any designs
that you produce are likely to be owned by the
commissioner or the employer
Design Rights
Which is the Designer Bag?

£9.50 or £495?

Jimmy Choo got upset by M&S copying its bag. They got an
injunction and M&S had to stop selling this design of bags
The Classic IP Case Study

The world’s most

valuable brand
(interbrand 2011)
Trademarks: Words

Coca Cola
Coke
Diet Coca Cola
Diet Coke
Trademarks: 2D devices and
3D shapes
Trademarks - Slogans
COCA-COLA IS THE MUSIC
COCA-COLA - THE SOFT DRINK OF
EUROPE
ALWAYS COCA-COLA
EAT FOOTBALL, SLEEP FOOTBALL, DRINK
COCA-COLA
Distinctive but not deceptive,
not illegal, not offensive.
Designs

…but we couldn't find the 'normal' Coke

Bottle registered as a design. They
promoted the glass bottle shape heavily
while they had Design Protection, then once
associated and had value, applied for longer
lasting Trade Mark protection
Patents
WO2004041496 - PET copolymer
composition with enhanced mechanical
properties and stretch ratio, articles made
therewith and methods
WO2004025388 Systems and methods for
temperature control in refrigeration systems
and heating systems
Recipe for Coca Cola – NO!!
Know-how
Coca Cola recipe
too valuable to risk disclosing to public
hard to determine even by chemical analysis of
the product
disclosure in patent allows people to copy
when patent expires
would the recipe actually be patentable?
New? – yes (when first introduced)
Inventive? - yes
capable of industrial application? - ?
BUT COCA COLA MADE
ONE REALLY BIG
MISTAKE
Does anyone know what that was?
 THEY FAILED TO
REGISTER THE WORD
COLA
“Thank you”….. said Pepsi!!
So What? - Business
What’s IPR to do with Starting a business?
‘The Deal’
IPR holder gets:
Negative Right to exclude others from commercial
exploitation (losses and injunctions) (Dyson vs.
Hoover)
In return for:
Making the ‘invention’
Disclosing the invention for the benefit of society
IPR holder gets “some” assurance
That it is not someone else’s IP =>20 year’s of
damages
Commercialisation of IPR
Property is worth something!
Generally only 5 IPR strategies available for
small-scale start up team
Use IPR as collateral to gain debt in start-up
Use IPR as collateral for equity in start-up
Exchange IPR for equity in existing firm
Licence to another firm(s)
Trade secret/Know how/Copyright
Or A MIXTURE OF THE ABOVE?
What you should take from this
lecture…
Have introduced intellectual property rights to you
covering Trade Marks, Design Rights, Copyright and
Patents
Your group needs to decide if IPR applies to your
business idea. If it does not how are you going to
defend your price/quality advantage?
If it does, you need to fully explore what is the right
way to defend your IPR (e.g. patent or copyright?) and
be clear about how you are going to use IPR in your
strategy.
Are you infringing someone else's IP
Something a bit different
Warwick Ventures
Software Incubator
Support for fledgling software companies

Exciting environment for software entrepreneurs to

mix with other entrepreneurs and early stage
companies.

The incubator will offer students, graduates and

members of staff with software ideas, access to
incubator space, as well as to mentoring and business
advice, as they move from an idea, to creating
software, and later forming a company.
Warwick Ventures
Software Incubator

Support all the way from finding the right contacts,

negotiating early licencing deals, training on how to
run a company, creating plans for the business,
through to the mechanics of setting up a business and
putting the right legal documents in place, and finding
investors if required.
The incubator is open to Warwick staff, students or
alumni.
 Thank you for listening
Any Questions?

b.spillane@warwick.ac.uk

from Innovation to Impact