Intellectual PropertyIntellectual Property

HEY Trust’s New IP Policy

and Role of Medipex Will it enable me to turn this …. into

HEY Policy on Intellectual HEY Policy on Intellectual PropertyProperty

• Staff will, from time to time, develop ideas and concepts which have practical applications and commercial potential - termed Intellectual Property (IP) that may be owned and protected:

- new techniques- Devices- Software- pharmaceutical products- formulae and writings

• Trust encourages its staff to develop and exploit Intellectual Property in conjunction with the Trust and the Regional NHS IP Hub (Medipex).

• Trust’s Medical Director (the Executive Lead for R&D) has ultimate responsibility for decisions regarding protection and exploitation of the Trust’s IP.

HEY Policy on Intellectual HEY Policy on Intellectual PropertyProperty

• Staff will, from time to time, develop ideas and concepts which have practical applications and commercial potential - termed Intellectual Property (IP) that may be owned and protected:

- new techniques- Devices- Software- pharmaceutical products- formulae and writings

• Trust encourages its staff to develop and exploit Intellectual Property in conjunction with the Trust and the Regional NHS IP Hub (Medipex).

• Trust’s Medical Director (the Executive Lead for R&D) has ultimate responsibility for decisions regarding protection and exploitation of the Trust’s IP.

HEY Policy on Intellectual HEY Policy on Intellectual PropertyProperty

• Staff will, from time to time, develop ideas and concepts which have practical applications and commercial potential - termed Intellectual Property (IP) that may be owned and protected:

- new techniques- Devices- Software- pharmaceutical products- formulae and writings

• Trust encourages its staff to develop and exploit Intellectual Property in conjunction with the Trust and the Regional NHS IP Hub (Medipex).

• Trust’s Medical Director (the Executive Lead for R&D) has ultimate responsibility for decisions regarding protection and exploitation of the Trust’s IP.

Ownership of IPOwnership of IP• As a general rule, Intellectual Property created by

any person during the course of his/her employment, belongs to the employer.

• The Trust is however committed to sharing with the staff concerned the rewards derived from successful commercial exploitation of IP which they have generated.

• There may be circumstances in which the Trust chooses not to take up its rights to the Intellectual Property, in which case the Intellectual Property rights of ownership (IPR) may be assigned to the employee.

– Staff responsible for protection and commercialisation, Trust retaining a 20% residual share of the financial benefits.

Ownership of IPOwnership of IP• As a general rule, Intellectual Property created by

any person during the course of his/her employment, belongs to the employer.

• The Trust is however committed to sharing with the staff concerned the rewards derived from successful commercial exploitation of IP which they have generated.

• There may be circumstances in which the Trust chooses not to take up its rights to the Intellectual Property, in which case the Intellectual Property rights of ownership (IPR) may be assigned to the employee.

– Staff responsible for protection and commercialisation, Trust retaining a 20% residual share of the financial benefits.

Ownership of IPOwnership of IP• As a general rule, Intellectual Property created by

any person during the course of his/her employment, belongs to the employer.

• The Trust is however committed to sharing with the staff concerned the rewards derived from successful commercial exploitation of IP which they have generated.

• There may be circumstances in which the Trust chooses not to take up its rights to the Intellectual Property, in which case the Intellectual Property rights of ownership (IPR) may be assigned to the employee.

– Staff responsible for protection and commercialisation, Trust retaining a 20% residual share of the financial benefits.

Sharing the BenefitsSharing the Benefits

• Trust agrees to distribute its net proceeds from exploitation:

• 40% of the inventors• 30% to relevant Clinical Department• 20% to Research & Development Department • 10% retained by the Trust

• Medipex will negotiate on behalf of the Trust if research funded by an external, non-NHS or University agency.

• Where Staff have joint contracts with other organisations, for example Universities, a partnership agreement on intellectual property issues will be developed with each such organisation.

Sharing the BenefitsSharing the Benefits

• Trust agrees to distribute its net proceeds from exploitation:

• 40% of the inventors• 30% to relevant Clinical Department• 20% to Research & Development Department • 10% retained by the Trust

• Medipex will negotiate on behalf of the Trust if research funded by an external, non-NHS or University agency.

• Where Staff have joint contracts with other organisations, for example Universities, a partnership agreement on intellectual property issues will be developed with each such organisation.

Sharing the BenefitsSharing the Benefits

• Trust agrees to distribute its net proceeds from exploitation:

• 40% of the inventors• 30% to relevant Clinical Department• 20% to Research & Development Department • 10% retained by the Trust

• Medipex will negotiate on behalf of the Trust if research funded by an external, non-NHS or University agency.

• Where Staff have joint contracts with other organisations, for example Universities, a partnership agreement on intellectual property issues will be developed with each such organisation.

Responsibilities – Trust StaffResponsibilities – Trust Staff

Be mindful of IP

Do not disclose ‘invention’ to third parties! - (grant application & paper submission)

Notify the Trust R&D Department of invention

Work with Medipex to develop and exploit IP

Make warranties regarding inventorship

Responsibilities – Responsibilities – Trust’s R&D Trust’s R&D DepartmentDepartment

Promote IP awareness

Advise on protection and exploitation of IP

Liaise with Medipex to ensure effective identification, protection, exploitation and record keeping of IP

Scrutinise contracts with external parties and ensure appropriate IP agreements are in place

Manage revenue generated through exploitation

Responsibilities - MedipexResponsibilities - Medipex Assess and advise Trust on exploitation potential

of IP, and most appropriate mechanisms

Work with the inventor to exploit invention– ‘Proof of Concept’ funds

Undertake patent searches and patent filing– pay Year 1 patent costs only!

Undertake negotiations on behalf of the Trust and inventor on licensing and other agreements

Disseminate examples of ‘best practice’

Assist with legal actions with third parties over commercial rights

Arbitrate in any disputes relating to assignment of inventorship

What is Medipex?What is Medipex?

• First independent NHS company in England & Wales

• NHS IP Innovation Hub for the Yorkshire and Humber Region, manage and commercialise IP within the NHS

• Trusts pay annual ‘Membership Fee’

• Acute, Community & PCTs

Medipex - Aims and ObjectivesMedipex - Aims and Objectives

• To ensure benefits of IP created by NHS are returned to the NHS

• To identify, assess and commercialise new ideas and innovations leading to improved patient care

• To develop clear IP exploitation strategies with the Trusts and other NHS bodies

• To ensure that non-commercial but valuable ideas are disseminated throughout the NHS

Medipex - StructureMedipex - Structure

• Board– Chair: Ex MD of Smith & Nephew– Chief Executive Officer of Medipex– Chair of the Shadow Board– 1 non-executive Director from each of 6 Consortium Trusts– 4 non-executive Directors from the Commercial Sector

• Operational Staff– CEO– 3 IP Managers: all of whom are postdoctoral scientists &

have experience of IP exploitation in the HEI Sector– Market Researcher: with experience of PR & Marketing in

the private sector– General Manager: previously an R&D Manager in the HEI

Sector– PA/Administrator: previously worked in the HEI Sector

Medipex - StructureMedipex - Structure

• Board– Chair: Ex MD of Smith & Nephew– Chief Executive Officer of Medipex– Chair of the Shadow Board– 1 non-executive Director from each of 6 Consortium Trusts– 4 non-executive Directors from the Commercial Sector

• Operational Staff– CEO– 3 IP Managers: all of whom are postdoctoral scientists &

have experience of IP exploitation in the HEI Sector– Market Researcher: with experience of PR & Marketing in

the private sector– General Manager: previously an R&D Manager in the HEI

Sector– PA/Administrator: previously worked in the HEI Sector

Has Medipex made a Has Medipex made a difference?difference?

• Since began trading in February 2004 it has: Carried out initial assessments on 400 NHS ideas, 70 of

which are being actively pursued

Worked as a partner with University, NHS Trust and company on 3 successful HTD Grants totalling £1.63m

Filed 12 patents and 3 trademarks

Successfully negotiated:– Six licensing deals on behalf of member Trusts– Has set up a spin-out company – Setting up a further 3 spin-out companies

Run 2 Regional Innovation Competitions in 2005 & 2006 with over 225 entries from 45 Trusts and £15.6k of prizes

Set up an e-commerce website to sell NHS training materials, books, software and advertise other NHS products

www.nhs-ennovations.comwww.nhs-ennovations.com

2006 Regional Innovation 2006 Regional Innovation Competition Competition

Clean Sweep for Hull & East Yorkshire Hospitals!

Innovative Device or Technology: Immersive (Virtual Reality) Tools for

Clinical Training of Therapy

Radiographers

Innovative Service Delivery: Use of the

"Hull Statin Calculator" to Guide Individualised Statin

Prescribing

Most entries (18) from a

Trust