Managing IP for Universities and Spinouts – what I wish I’d known four years ago
On 25th May 2016, we were fortunate to welcome Jeremy Holmes, the IP Due Diligence Manager of Imperial Innovations, to Keltie to present a lunchtime talk. This post begins by outlining Jeremy’s background and then delves into what he has learned from his experience in managing IP for Universities and spinouts, finishing off with how commercialisation works at Imperial.
Early career and move to IP
Jeremy’s career began in academia – following an undergraduate degree and PhD in Chemistry at Cambridge University, Jeremy spent two years in Strasbourg working with Nobel Laureate Professor Jean-Marie Lehn. After this, he joined the R&D function of ICI as a research chemist where he worked in a variety of roles including a Royal Society Industrial Fellowship at Edinburgh University and three years in the Netherlands for an ICI subsidiary. In 2000, Jeremy entered the IP profession by training in-house at ICI, AstraZeneca and Reckitt Benckiser and is now a fully qualified UK and European Patent and Design Attorney.
During his 12 years of working as an in-house Patent Attorney he gained a wealth of technology transfer experience which led him to Imperial Innovations where he joined as Patent Attorney and IP Due Diligence Manager just over 4 years ago. Jeremy’s role at Innovations is to manage IP and Patent Searching resources and to ensure that thorough and timely due diligence is carried out on investment opportunities, as well as to act as an in-house consultant on IP issues. This includes managing: the filing of approximately 60 new patent cases a year; the IP of spinouts; and the due diligence activities of the investment funds of Imperial College as well as the University of Cambridge, the University of Oxford and University College London.
The changing face of innovation – what are Universities looking for? (more…)
EPO News – July 2016
Examination refunds
Under current arrangements the EPO refunds 75% of the examination fee after the examining division has assumed responsibility for the case but before substantive examination has actually begun. In order to provide transparency over whether substantive examination has begun the EPO also posts a notice on the EP patents register to let applicants know when substantive examination has started.
As from 1 July 2016 the EPO is going a stage further (see EPO News Item) and is now starting to inform applicants, if operationally possible, at least two months in advance of the date on which it intends to start substantive examination. Any application that is withdrawn, refused or deemed to be withdrawn before such substantive examination has begun will get a full (100%) exam fee refund instead of the previous 75% rate. (more…)
Brexit – IP Myths and Misconceptions
As far as IPcopy is concerned, the level of political debate recently has not risen much beyond playground banter with facts and detailed arguments being sacrificed for soundbites and quotable political mantras such as “Let’s take back control”, “Let’s make Britain/America great again”, “We’re gonna build a wall” etc. It seems politics these days just requires the collective unconsciousness to be exposed to such sayings over a long enough period of time to ensure the votes follow…after all, who needs experts, eh? (more…)
Unified Patent Court Update – July 2016 – KBO*
Despite the result of the referendum in the UK, it would appear that technical preparations for the Unified Patent Court are going to continue.
The UK’s ratification of the Unified Patent Court Agreement is a required step in bringing the unitary patent system into play. Without the UK’s participation the remaining members of the project are faced with either waiting for the UK to leave the EU (which appears to be at least 2.5 years away now) or renegotiating the UPC Agreement to remove the UK.
However, in a joint statement from the Chairmen of the UPC Preparatory Committee and the EPO Select Committee dealing with the Unitary Patent it is noted that “it is too early to assess what the impact of this vote [the Referendum] on the Unified Patent Court and the Unitary Patent Protection eventually could be”. The statement ends with the Preparatory and Select Committees stating that “work dedicated to the technical implementation should continue to progress as envisaged.” (more…)
The Brexit Referendum, Article 50 and IPcopy
Just a few days ago the UK went to the polls and returned a verdict which shocked the country, Europe and the world. Oh, and wiped $3 trillion off the world stock market.
The following days in Westminster have been (mild understatement follows) somewhat interesting. The UK Prime Minister is on his way out, the Conservative Party is gearing up for a leadership contest, Boris has been betrayed by the Govefather, Jeremy Corbyn has installed a revolving door in his Shadow Cabinet and Nigel Farage went to the EU Parliament to suggest a cardiac surgeon born in a Soviet gulag had never had a real job in his life. (more…)
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