19th June 2017

Wynne-Jones: Realising the NHS’s commercial potential through IP

Innovation is frequently recognised as the life blood of medical progression.

From vital research and development which can transform millions of lives across the UK, to the creation of unparalleled medical devices which revolutionise the future of patient treatment, innovation is at the heart of everything.

The majority of patients absorb the benefits of these enhanced medical procedures through the NHS, which treats three million people in Wales annually, and 64.6 million people in the UK every year.

With the NHS budget running into billions, it also presents significant potential for commercial viability through its innovations.

Huge innovations are made within the NHS such as new and improved diagnostic methods, methods of treatment (both curative and preventative), new therapeutics, new medical apparatus and devices and the in-depth technology behind them such as the computer software driving them.

Commercialisation and widespread adoption of healthcare innovations, both in the UK and around the world, is essential in them succeeding and making a difference to patients’ lives.

To do this, investment from commercial partners is required. In order to justify an investment, the commercial partners will typically need to know that the innovations they are investing in are protected – that they will gain exclusivity in the market place. This protection and exclusivity can be gained through intellectual property (IP) rights. Without the overarching protection of IP, these life-changing innovations could fail to be developed and exploited to their full commercial potential.

Global spending on healthcare continues to boom, and with the UK’s medical device industry worth over £7 billion annually, and with over £4 billion spent annually in the UK on pharmaceutical R&D, using intellectual property to its full extent can make a huge difference to patients.

But how can the NHS fully embrace IP to reap the commercial benefits of its innovations?

Jim Robertson, partner and patent attorney at leading Cardiff-based firm Wynne-Jones IP, which specialises in providing tailored advice on patents, trade marks, design rights and copyright to sectors worldwide, offered his advice on IP in the NHS to promote commercial thinking.

What is IP?

Intellectual property (IP) is the innovative ideas, the creations of the mind, such as inventions, literary works, computer software, artwork, and symbols and names used in business. The creator has a right to protect this intellectual property and to commercialise it.

Who owns it?

Due to the complexity of employment within the multitude of businesses which exist under the NHS umbrella, ownership of IP rights can sometimes be difficult to establish.

Furthermore, as research, development and creation evolve, lines over who played what role can become blurred and consequently establishing ownership can be difficult.

In the case of an NHS employee, if their innovation was created in the course of their employment, it is plausible the rights to their innovation will be owned by their employer. However this should always be checked against NHS Framework for clarity.

Under the Patents Act 1977 an invention belongs to the employer if an invention was made in the course of normal working duties, and resulted from those normal duties being carried out.

R&D can pose problems in terms of ownership. When beginning a project, those hiring external contractors or researchers should create a contract to ensure they own any IP rights which result from the work.

Can you share ownership?

If IP is created during the course of employment an employer is not legally bound to share commercialisation income with an employee. However certain NHS Trusts may include a clause in these circumstances to enable the employee to enjoy commercial benefits.

Establish your IP rights – copyright, patent, trade mark or design?

Once you have identified what your innovative idea (your IP) is, you need to protect it. The better this is done, the better the chances of you being able to successfully commercialise it.

There are four basic types of intellectual property: copyright, patents, trade marktrade marks and designs.

Copyright – Copyright describes the rights that creators have over their literary and artistic works. This can be anything from books and music to paintings, computer programs, databases, and technical drawings. As the name suggests, copyright can be used to prevent copying (but does not have any effect on literary or article works that other people come up with independently)

Patent – a patent is an exclusive right granted for an invention, be it a product, process, apparatus or use. Typically, inventions can be viewed as being a technical solution to a technical problem. A patent gives the owner the right to choose in what manner the invention is utilised by others.

Trade mark – a trade mark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises.

Designs – both registered designs and unregistered designs exist. They protect the shape, configuration, pattern or ornament applied to an article by any industrial process. Essentially, they are concerned with the aesthetics of products.

Speak with an IP attorney to get their guidance on what exactly you have got and how it can be protected. Some innovations can cover multiple types of IP.

Once your innovation is protected, you can then look to commercialise it.

How can I begin the commercialisation process?

Typical options for commercialisation are licensing or alternatively creating a company. Licensing can allow a third party to handle the commercialisation, reducing the risk to you, and can provide an immediate return on investment. However, licences have to be carefully negotiated and there are pitfalls for the unwary. As ever, seek advice from a legal professional before entering into any license agreement. Creating a company to commercialise your innovation can lead to greater rewards, but can itself be a long and complex journey. Again, seek advice from a legal professional as your company is created and as it grows to ensure that your rights are protected.

Put it in writing

Whenever agreements are entered into regarding IP, you must ensure that they are done in writing, and you should ensure that you get advice from a legal professional to ensure that the agreement does what you want it to do and protects your rights. For example, when a transfer of rights in an invention is made from one party to another, an assignment agreement should be drawn up and executed.

This will include the full names of both parties involved stating which is the assignor and the assignee. Background information on both parties will be set out. The assignment of the intellectual property must also be detailed with a clear description of what is being transferred, what it entails, the obligations of both parties, and the payment (the “consideration”) which is made in exchange for the transfer of rights.

Obligations of the parties must be clearly defined in order to avoid any confusion surrounding the extent of their obligations in the event of any dispute at a later stage.

Setting out a contract can be complex, and so seeking the advice of an expert IP attorney to assist with this will be beneficial.

First steps – where can I get advice?

NHS employees, or those in an NHS Trust, can seek advice on the commercialisation of their innovation, and support with intellectual property matters through an established IP Lead or unit. Many NHS Trusts also have dedicated innovation hubs.

IP attorneys at specialist firms, such as Wynne-Jones IP, are also on hand to support employees in realising the commercial potential of their innovations.

View the Wynne-Jones IP profile here.