Results of research in the NHS can lead to ideas for a new product or process such as a potential new treatment, a new diagnostic technique, a new piece of equipment, a software programme or a new drug.
These ideas can bring financial benefit to the Trust and to the researcher, providing another organisation or individual does not have the opportunity to use them before their ownership is legally protected. It is important that ownership and protection of these ideas are established at an early stage in their development.
If these ideas (intellectual property) have a tangible output, are new and not in the public domain, then it may be possible to sell or licence them commercially, or even create a non-NHS start up company to commercialise the outputs. In order to do this the ownership rights to the intellectual property must be legally established and protected. The most common forms of protection for NHS research are through patents, copyright and design rights.
There are some important definitions and considerations surrounding the protection and commerical exploitation of intellectual property of which researchers should be aware:
the tangible output - There are many types of tangible outputs - these can include, for example, a medical or dental device, a diagnostic technique, a computer programme, a gene therapy, a design of a prototype medical instrument, an instruction manual or book.
the 'novelty' of the idea - For ownership to be legally protected it must be new (not previously available in the public domain), and contain an inventive step. An inventive step is an advance which is not obvious to anyone with similar skills.
terms of contracts of sponsored research - When the contract is negotiated, it should specify who owns the intellectual property rights. This ownership could be with either party or shared.
prior publication/disclosure to a third party - Protection and commercialisation of the intellectual property will almost always be impossible if information on the research has been published or shared with others. This includes publication in scientific journals or presentations at conferences.
cost of protection in relation to potential commercial value - It can be very expensive to patent an invention (up to £70,000 over 20 years), so the potential commercial value of the invention needs to be evaluated and a decision made whether to proceed with legal protection. The process of identifying, protecting and exploiting new ideas can be complex, but this need not put off researchers.
Nine Regional Innovation Hubs for the NHS in England are funded primarily by the Department of Trade and Industry (DTI) and Office of Science and Technology (OST) via the Public Sector Research Exploitation (PSRE) scheme and the Department of Health (DH).
The Regional Innovation Hubs are there to develop an Innovation Management service for NHS Trusts which identifies, protects, develops and exploits innovations and their associated intellectual property for the benefit of patient healthcare and the NHS.
Intellectual property and your obligation to Homerton Hospital
You will not, without the prior consent in writing from the Trust, during the term of your employment or after its termination, disclose in any manner whatsoever any confidential information that you aquire by reason of your employment, not already available to the public. This confidential information may include, but will not be limited to:
- any confidential research work, inventions, applications for and information about patents
- finance, transactions or business affairs of the Trust; and
- any information, similar to that identified in the two bullet points above relating to any third parties with which the Trust has a business relationship.
This clause will in no way affect your right to make use of the general knowledge and skill which you acquire in the service of the Trust.
Inventions and copyright
For the purposes of this clause ‘Work’ refers to any invention (whether patentable or not within the meaning of the Patents Act 1977), discovery, design, copyright work or improvement. Copyright works and designs include software, technical drawings, computer programs or associated documentation, manuals or articles.
If, in course of your employment, you make any work relating to, or capable of being used in, the business of the Trust, you will promptly disclose to the Trust full details thereof to enable the Turst to assess the work.
Any such work will, as a matter of law, be the exclusive property of the Trust and you will, at the request and expense of the Trust either during your employment or after its termination, do all the things necessary, including signing and delivering any document, to enable the Trust to obtain the benefit of the work and to secure patent or other appropriate forms of protection thereof in any part of the world.
You also agree to comply with the decisions of the Trust with regard to publication, written or otherwise, of any work with which you may be associated in the course of your employment.
This clause will continue in force after the termination of your employment in respect of any work made during such employment.
Further information can be found in the Framework and Guidance on the Management of Intellectual Property in the NHS by the Department of Health.