Managing Intellectual Property

Patent filing strategy

Request completion of Invention Disclosure Form

Form of IP protection required

Other IP identified from the project: Is there any IP that was developed in the course of the project unrelated to the project objectives, but that could have commercial relevance in another area?

Strengths/weaknesses identified

Relevance to other technologies in the organisation: The results being audited should be reviewed in the broader context of technologies emerging from other research groups in the organisation to see whether there are any synergies.

Proof-of-principle established: Provide a statement as to whether a proof-of-principle has been established or where the research currently stands with respect to demonstrating the principle.
Ongoing work: Provide an outline and time-scale for remaining experiments that need to be completed and where they fit with respect to a proof-of-principle, or supporting data for a potential patent application.
Relevant prior art/competitors: Indicate any patents, publications, research groups or companies that have been identified as being relevant to the invention or the state of the art.
Relevance to the organisation’s business strategy: Identify whether the innovation has a strategic fit with the specific business objectives of a company or those of a collaborating partner who is planning to commercialise the technology. If “Yes”, then it should be protected as appropriate.

IP report: The objective of the report is to gather concise information regarding IP being created in the project, as opposed to generating a report on the progress of the research per se. The following points will help to focus the report in providing information specific to the IP:

Market information: Has any market analysis been performed to date and is there any information already available to indicate how the technology might be best commercialised? Are there any collaborating or interested third parties that would like to see a patent application being filed on the technology and who might support the costs?

For other forms of IP, indicate whether they are related to artistic creations or branding concepts: copyright – software, document, drawing, database; design – technical or aesthetic; know-how – useful process or method; trade mark – name, brand, or logo for use in marketing products or services; or ‘Other’.