NHS Innovations London - Intellectual Property

What is intellectual property (IP)?

The novel or previously undescribed tangible output of any intellectual activity can legitimately be described as intellectual property. It has an owner; it can be bought, sold or licensed and must be adequately protected. It can include inventions, industrial processes, software, data, written work, designs and images.

Who owns IP?

The Patents Act 1977 states that:

1 An invention made by an employee shall be taken to belong to the employer if:

a. it was made in the course of the normal duties of the employee and the circumstances were such that an invention might reasonably be expected to result from the carrying out of his duties, or
b. the invention was made in the course of the duties of the employee and because of the nature of the duties he had a special obligation to further the interests of the employer's undertaking.

2 Any other invention made by an employee shall be taken to belong to the employee.

The Copyright, Designs and Patents Act 1988 adopts the same stance on ownership for all classes of intellectual property it covers, namely that intellectual property produced by employees in the course of their normal duties belongs to the employer.

Who owns IP within the NHS and how do you benefit as an inventor?

NHS Trusts (as employer) owns all IP generated by its employees in the course of their employment. You will always be recognised as the inventor and Trusts are encouraged to adopt a revenue sharing scheme with you.

What are IP Rights?

They define the legally-protected rights which enable owners of intellectual property to exert monopoly control over the exploitation of these rights, usually with commercial gain in mind. They give the right to stop others exploiting this property, sometimes for a fixed period, sometimes indefinitely.

How can IP Rights be protected?

Patent: These are a time-limited monopoly right granted to inventors in return for them disclosing their invention. Each patent application should embody a new, non-obvious idea that is capable of being made or used (is industrially applicable). In many countries certain subject areas are exluded from patentability. Examples of excluded technology include mathematical algorithms, scientific discoveries without industrial application, business methods and mental acts. [more]
Copyright: This form of protection may apply to a wide range of creative or artistic "works". Copyright does not cover the idea, only the form or manner in which it is expressed. Works covered by copyright include literary (books, computer programs, song lyrics etc) and artistic works (paintings, drawings, photographs etc), recordings of a work (sounds and film), music, drama and typographical arrangement. [more]
Database Rights: Prevents the copying of substantial parts of a protected database. [more]
Registered Design Rights: A registered design will cover the lines, contours, shape, texture, colours and materials of the item or its ornamentation. The design must be new and have individual character. [more]
Unregistered Design Rights: Design right covers the internal and external shape or configuration of an original design. [more]
Trade Marks: (both Registered and Unregistered): These protect any sign or symbol that allows consumers to distinguish between different providers. Examples of protectable trademarks include names, logos, slogans, domain names, shapes, colours or sounds. [more]
Know-how: This IP right can be defined as confidentially held information or "Trade Secrets" in the form of inventions, designs, drawings and methods/processes, together with accumulated experience of those who developed it. [more]

Who decides whether it is necessary to seek IP protection?

The decision would normally be taken jointly by you, the inventor, and your Trust with advice from NHSIL. Registered intellectual property protection will only be sought if the route to patient benefit is best met through commercialisation.

Do I need to keep information confidential?

It is essential that decisions relating to IP protection and commercialisation are made before publication or any other form of disclosure, formal or informal. Discussions with third parties should be carried out under a Confidentiality Agreement.

What is a Confidentiality agreement (CDA)

An invention may be disclosed prior to filing a patent application, provided it is covered by a Confidentiality Agreement between the inventor and the party to whom the invention is disclosed. Such agreements provide evidence of the receiving parties understanding of the confidential nature of the information and express in written form the receiving parties obligation to keep the information in confidence. Confidentiality agreements (CDA) also known as Non-disclosure agreements (NDA), are simple agreements and can be obtained from NHSIL.