IP and the NHS

Why bother protecting your IP?

In simple terms, IP protection is the best method of preventing other people from copying the work. It gives an exclusive right to use the invention or to let others use it under agreed terms.

For NHS Trusts, IP may provide a basis for collaboration with universities and industry and may help attract funding for further research and development and exploitation of protected IP can lead to financial reward for both owner and inventor.

Who owns the IP?

In most cases, the patent or other IPR will belong to the employing NHS organisation under the terms of the employment contract and assuming that the invention is related to the field of the employers business. The employer's right of ownership is covered by the Patents Act 1977 and the Copyright, Designs and Patents Act 1988. If the work is carried out as part of a collaborative venture or sponsorship deal involving for instance other research institutions, companies or grant awarding bodies then ownership of any IPR arising is more complicated. It is advisable to negotiate IPR ownership before commencing the work. Most Research Councils and grant awarding bodies have policies on IP ownership.

When filing a patent application, the inventor(s) are specified. Thus, if a NHS Trust claims ownership, the relevant employee(s) are named as inventor(s). An inventor has to have made a creative intellectual contribution and all inventors must be recorded otherwise there is a risk that the patent will not be granted or may be revoked. A colleague or associate who has contributed substantiating data does not qualify as an inventor. The inventors may be entitled to a reward from their employer but this is not covered by law and will depend on the relevant employment contract.

Although the employer can claim ownership of the IP, in most Universities and increasingly in NHS Trusts there is provision for the inventor(s) to benefit financially if the invention is commercially successful.

How does IPR generate income?

Income can be obtained through licensing, sale or assignment of intellectual property rights. Since protection of IP can be an expensive and time-consuming process, it is often preferable to have an agreement with a commercial partner who will be responsible for leading the exploitation effort. Licensing is the most likely exploitation route. It allows the provider to retain ownership of the IPR and therefore more control over the exploitation process, and the IPR value can be increased with further research. Licences can be exclusive or non-exclusive; they can be limited by e.g. time, geography and field of use and may involve the payment of lump sums and/or royalties to the owner. A straightforward sale of IPR involves transfer of ownership rewarded by payment of a one off lump sum. Alternatively, the IPR can be assigned to another party with an agreement covering transfer of ownership and possibly payment of a lump sums and/or royalties. The buyer or assignee of intellectual property is responsible for all ongoing costs involved in protecting the IP, e.g. in paying patent costs and renewal fees. WIsH can broker these arrangements if required.

What to do if you think you have an invention?

Take professional advice from your Trust R&D Manager or WISH before publishing or discussing the details of the invention with anyone who is not directly connected with the work and who is not subject to a confidentiality agreement. Your adviser may suggest that as a first step you should complete an Innovation/Invention Record. This will cover the basic details needed to determine whether intellectual property is available for protection and identify research with commercial potential.

Confidentiality

Within the NHS Trusts and Universities the principal objective of academic research is often publication and dissemination of information and knowledge; in these cases there can be a direct conflict between publication and the confidentiality required for protection of IP or in protecting the interests of collaborative partners.

Confidentiality is important when:

research is carried out under funding arrangements which confer responsibilities of confidentiality on the University/NHS Trust
there is an opportunity to benefit from transferring the confidential results of research to industry and commerce
an invention may be patentable [it is not possible to patent an invention in the UK which has at any time been made available to the public (whether in the UK or elsewhere) by written or oral description, by use or in any other way]

Confidentiality agreements should be in place before disclosure of confidential information to a company either in the early stages of discussions that may lead to research collaboration, or in negotiating licensing of intellectual property. Confidential Disclosure Agreements (CDA) are frequently used to outline the relationship between the NHS Trust/University and a company or individual, when one party discloses confidential information to the other. WISH can provide these if required.

Keeping information confidential until it can be protected by, for example, a patent is often essential in establishing links with industry. It is far harder to encourage a company to fund research or to license technology if the company has no privileged or exclusive access to the research work.

Note

The rules governing IPR, in particular patents, are very complex and each case will be different. The information provided within this site is necessarily general and cannot be guaranteed to cover every individual example. It is important that specialist advice is obtained. The information contained within this web site is for guidance only and WISH and associated partners does not accept liability for any use to which it is put.