Inventions & Patents

A patent is a form of intellectual property (IP).  From a legal standpoint it provides the right to exclude others from making, using, selling, offering for sale, or importing the patented invention for the term of the patent.

From the academic’s point of view, a patent can protect innovations that arise from research, and allow the academic inventor the freedom to pursue commercialisation – and reap the benefits of licensing deals or spinout company formation. 

The University supports academics who wish to patent their inventions by providing a specialist IP team that manages the process of filing patent applications, licensing and spinout company formation.  

This process is financed by the University and is provided free to academic inventors, who then receive a share of the licence income that is generated from patents licensed to third parties.  

For an invention or process to be patentable there are three strict criteria that must be met:

• It has not be disclosed publicly anywhere in the world prior to filing the patent application.  Disclosure includes peer reviewed publication, or presentation at conferences and posters, talking to people outside the University (unless covered by confidentiality restrictions).
• It must include an inventive step.  An inventive step is defined as a ‘non-obvious’ development in the technology or process. 
• It must be capable of industrial application. 

The easiest way of finding out whether your idea is patentable is to fill in a Confidential Record of Invention (ROI) form and submit to the IP team.  A word version of the Confidential Record of Invention is available here.

There are several stages to filing a patent, and the process - from filing a provisional UK patent application to the granting of a national patent – usually takes 4-5 years. 

At each stage the IP team works with patent attorneys who are selected from a roster of retained legal firms that specialise in intellectual property.  

The initial stage of filing a provisional UK patent application may be performed relatively quickly (within 4-6 weeks from initial contact), and protects your invention against further patent filings in other countries for 12 months from the date of the filing.  Where necessary, the process can be accelerated to file ahead of a planned public disclosure but this should be avoided where at all possible.

The invention is protected from the date that the provisional UK patent application is filed. 

The international (PCT) application serves to establish the filing date in all countries that adhere to the international Patent Cooperation Treaty and is usually filed twelve months after the UK patent application.  The IP team then has 18 months to file the patent in the territories where exclusivity is required.  These are known as national filings. 

Each national filing is examined by the in-country patent office, which usually raise objections, or matters that require clarification, before a national patent is granted. 

Patent protection is granted for 20 years.  

The information you provide on the ROI form helps the IP team evaluate the opportunity and determine the patentability of any inventions.  Additionally, restrictions around the opportunity may arise from IP clauses in grant awards, and the contributions of other people or organisations, or pre-existing IP not belonging to the University. The IP team is very willing to help you complete the ROI form. 

You can download the ROI form here. 

The completed ROI form should be submitted to inventions@alta.bham.ac.uk.

It is especially important to take this first step if you are planning to publish your idea in a peer-reviewed paper or at a conference, because if you first mention your idea in public in this way, it can no longer be protected and others may use it for free. 

Preparing a patent application typically takes four weeks once you have provided all of the necessary information, so you should bear this in mind and contact the IP team as early as possible to discuss your ideas.

When the ROI form is completed, the IP team, in conjunction with a patent attorney, conducts a patent search, to find out whether there are any existing patents, journal articles or other publications in this area. 

The IP team also conducts an assessment of the invention to determine the commercial potential and viability of the idea.  This commercial assessment uses pre-set criteria including the scope of any patent, the readiness of the technology, the value of the market, and the competitive edge of the product or service to be patented. 

This commercial assessment can be a time-intensive process and the information it yields informs the decision on whether to pursue a patent application now or later. 

The assessment is discussed with you and a decision is made on whether and when to apply for a patent or not, and any actions you could take to improve the patent application being filed or that might be filed at a later date.  

A provisional patent application protects your invention against further patent filings in other countries for 12 months from the date of the filing. It is usually filed at the UK Patent Office but occasionally it is filed in other territories, most often the USA. 

It is drafted by a patent attorney, and a draft of the patent application is provided to you so it can be reviewed. 

The purpose of this review is to check that the patent attorney has fully understood the information you provided.  This process is very similar to the review process that occurs during the drafting of a multi-author research paper, and finalising the draft can take up to three cycles of review and amendment – although each successive review takes less time.

Often the patent attorney will ask to discuss the invention with you before drafting or finalising the patent application to discuss issues such as defining the invention. 

Once the patent application is finalised it will be filed at the UK Intellectual Property Office.  At this stage you are free to make public disclosures of the information contained in the application through publications and presentations.

Within 12 months of the provisional UK patent application filing, the IP team normally files an international application through the PCT (Patent Cooperation Treaty) process.

The examiner at the Patent Office receiving the patent application issues a search report and written opinion on whether the application meets the criteria for patentability.  The most usual reason for applications not meeting the criteria is pre-existing information casting doubt on novelty and/or inventive step.  In these cases the IP team may revert to the inventor for clarification on points raised to enable the team to be prepared for these objections during the examination procedure. 

At this stage the IP team is also developing a marketing strategy for the IP, and starting discussions with potential customers, to ensure that the University can realise the potential of the invention covered by the patent.

Thirty months after the original filing date the application will enter the national phase, when patents can be filed in specific countries. 

This is the most expensive phase of patenting – and there must be a clear route for commercial exploitation before this phase is reached.   This can include pursuing the patent application where significant grant money has been received to develop the intellectual property to bring it closer to market as is typically the case for industries with long time lines to market such as pharmaceuticals, energy and aerospace.

The IP team aims to negotiate a deal with a licensee before entry into the national phase or shortly after  (unless grant money has been received as discussed above) and at this stage has already worked closely with the inventor to agree the key markets, patent territories and potential licensees.  

There are two main ways of generating income from patents for a university: licensing to an existing company or licensing to a company specifically set up to exploit the technology (a spinout company).  The most frequently deployed of these is licensing to an existing company. 

During the patenting process the IP team actively seeks potential licensees.

Licensing deals vary in their complexity, and may generate an up-front payment, regular (usually half yearly) payments based on sales volume (i.e. a royalty), or lump sum payments which are only paid when the technology reaches pre-determined commercial or technical milestones. 

The net income generated from licensing is distributed between the academic inventor, central University of Birmingham funds, and the school or college that employed the inventor when the patent application was filed. 

The net income is defined as the income after the deduction of 15% (which goes to University central funds) and any third party costs including those associated with a patent application.

Where the net income is up to £100,000/year, 50% is distributed to the inventor, a further 25% to University central funds, and 25% to the school or college.

Where the net income exceeds £100,000/year, the excess is distributed as 20% to the inventor, a further 40% to the University central funds, and 40% to the school or college.   

Setting up a spinout

In some circumstances theIP team may conclude thatthe best route to exploitation of your ideas and patent is to form a spinout company. 

Further information on spinout company formation