Kings College London

How we help our clients to maximise the effectiveness of their invention management process

Background

King's College London is one of the top 25 universities in the world. The college has a global reputation for research excellence, and their Business Department has the job of managing the commercial developments made by each research department: from engineering and pharmaceuticals to ophthalmology, computer science and immunology.

The department uses patent applications to secure finance from interested investors, either through working partnerships, funding continued development or, simply by selling the technology.

The issue

Inventors in universities are under pressure to publish their research at an earlier stage of invention than those in the commercial sector because of the need to draw in funding.

This can mean that information concerning the invention can be published before a patent application is filed, which may destroy the chances of obtaining patent protection.

Accordingly, universities may hold back from pursuing an invention if they aren't sure they can obtain strong patent protection and, because of financial concerns, they may be reluctant to consult a patent attorney for every new development in order to find out.

The solution

Withers & Rogers worked with the Business Department to develop a culture of greater IP awareness so that the researchers would be better at spotting potential inventions and that unnecessary public disclosures of information could be avoided.

We ran a number of training programmes specifically aimed at assisting universities in identifying potential inventions. We also assisted King's with the development of standard ‘Invention Disclosure' forms, which would give them sufficient basic information at the early stages of a project to decide on its commercial viability.

We set up regular IP surgeries at which our attorneys could see three or four inventions at a time, analyse their value and discuss the patent issues. In this way we could maximise the value of each visit, while keeping consulting costs to a minimum.

In addition, we provided a free review meeting every six months during which we briefed the business managers on the patent status of ongoing projects as well as providing an update on any recent legal developments that were of significance to their business.

The outcome

Through our ongoing work with King's Business Department, we have been able to provide them with information and working strategies to maximise commercial gain from their inventions, while ensuring that our consulting costs are affordable.

What the client says

“With Withers & Rogers’ help, we have managed to develop efficient systems for capturing and analysing potential inventions. We have found the surgeries and review meetings very valuable in helping us to manage our costs, and in keeping us fully aware of the status of our patent portfolio.”

Dr Mike Shaw, Commercial Director, King's College London Business Ltd

"Jag uppskattar att arbeta med Withers & Rogers för att de förstår det kommersiella syftet med immateriella rättigheter. Det innebär bland annat att de är tillmötesgående och lyssnar av våra tankar och behov innan de agerar. Att de har hög kompetens vad gäller både de tekniska fält vi arbetar inom och lagstiftningen och att man alltid kan få ett omedelbart svar på frågor när det behövs, ser jag som självklarheter. Det jag framförallt uppskattar med de ombud jag arbetar med, är att de har en slående språklig argumentationsförmåga som kommer väl till pass i besvärligare ärenden."

Anne-Li Sigvardsson, IP Manager and Product Manager Transplantation, Vitrolife AB