Contact Imperial Innovations, preferably before discussing it with anyone else (other than Imperial College employees or your academic collaborators). Public disclosure can destroy the chances of filing a patent on a new invention.
If in doubt, please approach Imperial Innovations at any time. We can quickly provide an opinion on whether your invention is sufficiently enabled to allow us to protect or commercialise it. Even in cases where some more work may be needed, we can provide some simple guidance as to what needs to be done to protect / commercialise your idea. As a general rule, run your idea before Imperial Innovations before you present it via publication, posters or at external meetings.
We never delay publication (unless you specifically consent to do so). In general, and provided we are contacted a reasonable time before disclosure/publication, we can work with you to file a patent before disclosure occurs. It can typically take one to two months to file a strong patent application (but please contact us anyway if disclosure is imminent, or has occurred in the last twelve months as we may be still able to help).
We will need to understand the nature of the new idea, an example of enabling the invention (i.e. proving the principle), and some more 'admin' related questions such as who funded your work and the names of any collaborators.
Probably not. The company has no legal obligation to you (unless Imperial Innovations has filed a patent first) as you disclosed your work via the publication without restriction. It might be worth contacting them regarding further development of your technology, however, arrange a Confidentiality Agreement first (Imperial Innovations or Imperial College Research Services can help here).
Publication of discoveries in health care without obtaining patent protection will often ensure that such discoveries are never developed for the good of anybody. See the section Imperial Innovations IP Policies and Ethics for ways in which Imperial Innovations seeks to ensure that inventions from the College are developed for the benefit of both the developed and developing worlds.
Firstly contact Imperial Innovations. Then find all emails, letters, meeting notes and any other records you have of what was discussed and precisely when, and whether confidentiality was absent, implied (for example you told them that you considered this as secret) or explicitly agreed (e.g. via a Non-Disclosure Agreement and marking your presentation as 'confidential'). Where possible, please avoid confrontation and preferably work with Imperial Innovations to structure a formal approach.
Contact Imperial Innovations - we will be delighted to make a presentation to you and your colleagues about patenting, copyright etc, and how Imperial Innovations helps the College and its inventors to benefit from their inventions.
Under the terms of the College's contract of employment, inventions made by College employees as part of their duties as employees become the property of the College. Patenting is costly. An initial patent application may cost from £3,000 to £5,000 in patent agent fees alone, and the costs grow thereafter (often approaching over £30,000 within two and a half years). If it decides to file a patent application, Imperial Innovations bears all patent costs at its own risk. If the invention is commercially successful, significant revenues can be returned to the inventor. If not, the inventor pays nothing.
Unlike most Industrial companies, the College as your employer operates a discretionary 'Rewards to Inventors’ scheme. It provides for a proportion of future income from the commercialisation of intellectual property by Imperial Innovations to be returned to the inventors/contributors according to a set scheme. The Rewards for Inventors policy is Imperial College Human Resources (HR) policy and questions about its workings should be directed to College HR. Details on the revenue share and ownership of IP are available on Imperial College London’s website.
It is important to distinguish between ownership, inventorship and authorship.
Ownership is the 'owner' of the IP, which is generally Imperial College as your employer (see student exception below) and Imperial Innovations as the assignee of the College. The owner is the person able to work and commercialise the invention. College always retains the right for academic and teaching rights to new IP arising.
Inventorship is where you can show you were the 'actual devisor' of an invention. Where a patent is filed a simple rule of thumb is that you must be able to 'name the claim' in the patent that you actually devised (either alone or together with colleagues/collaborators). However, this is not a foolproof method of determining inventorship and Imperial Innovations (along with its patent agents) can advise and assist in attempting to determine inventorship. (Note that inventorship is a matter of law and is objectively determined).
Authorship is often confused with inventorship, with the most common mistake being to assume that being named on a publication means that the named person is also an inventor. Imperial Innovations will work with you to determine those parties that made a significant 'contribution' to the invention (e.g. reduced your idea to practice, developed the protocol or recipe etc.) By mutual agreement, these 'non-inventive contributors' to the invention may also be eligible for inclusion in the College's rewards policy.
In all sponsored research contracts and commercial deals, Imperial Innovations and the College always retain the right for academic research and teaching. Where possible, a right to transfer arising materials to other academic institutes (to promote academic sharing of research materials) is also retained (provided a suitable Material Transfer Agreement is put in place prior to the transfer). See Imperial College London’s MTA Process for further information.
In all sponsored research contracts and commercial deals, Imperial Innovations and the College always retain the right for academic research and teaching. Where possible, a right to transfer arising materials to other academic institutes (to promote academic sharing of research materials) is also retained (provided a suitable Material Transfer Agreement is put in place prior to the transfer). See Imperial College London’s MTA Process for further information. It depends…
First: Students are required to adhere to College policies as a condition of studying at Imperial. The College policies covering IP and students make it clear that where a student has acted on the instructions or in conjunction with his/her principal investigator to invent something, then the College owns the Student's IP in that situation and will treat and reward the student as if they were an employee of Imperial College.
Second: In cases where students do own their IP, it may still be advantageous to work with us. We often hear 'Why talk to them, they'll take a cut of my idea' but in reality there are many advantages to working with Imperial Innovations. 1.We cover all the patent or IP costs. A typical filing covering the major territories of UK, EU, US, Japan, Canada and Australia may cost in excess of £30,000 within the first two and a half years. Many inventions take longer than that to fully gestate and to be validated so that a commercial partner may be found. 2.We are well networked with industrial partners and can maximise the chances of your technology being exposed to the right parties at the right level in an industrial company. 3.We negotiate the deal and in the majority of cases can use our in-house lawyers to minimise/prevent legal costs being accumulated. 4.We structure the deal so that the technology reverts to the student if it becomes apparent that commercialisation seems unlikely. 5.We treat you as an Imperial employee so that you receive a fair share of any future potential revenue.
Absolutely. Most UK charities now put in place 'terms and conditions' prior to funding the research and these set out ownership and commercialisation rights for IP arising during the research. As a general rule, the College owns the IP arising and a share of any future commercial proceeds are returned to the charity.
The College has general 'framework' agreements in place with most of the major UK funding charities, and operates similar procedures to those set out by the Association of Medical Research Charities (AMRC) in their guidelines with regard to the smaller AMRC member charities.