https://ipo.blog.gov.uk/2015/03/11/visionary-ip-partnerships/

Visionary IP partnerships

Joint patents are usually greeted by a sharp intake of breath. Lawyers warn of future conflict. Corporates fear loss of control. Others are more relaxed.

For Phil Breedon, a reader in smart technologies at Nottingham Trent University (NTU), they represent a path for capturing the innovative potential in collaborations, particularly with smaller companies.

His first patent is close to bringing a near 40-year quest to an end. It has been developed in partnership with a local health professional, John Pacey Lowrie. He specialises in creating false eyes that are as close to reality as possible.

It is a highly specialised task. Pacey Lowrie has spent his career creating replicas to fit each patient so well that they even move in response to muscles in the socket.

One refinement has always eluded him: the dilation of the pupil in response to light. For wearers, it could significantly improve their confidence when they are out, particularly in the evenings.

Three years ago, Pacey Lowrie started talking to NTU. Up until then, he had never heard of smart materials. Following two post-grad projects funded by the EU, he now has a working prototype for a pupil that dilates.

Through a sensor, it sends a signal to a carbon paste that sits on an expandable film at the back of the eye. The earliest version was the size of a volley ball. Now it is closer to a tennis ball.

Even split

Together, Pacey Lowrie and the university have filed a patent splitting the ownership and the costs 50/50 between themselves. They applied in the UK first, but are now are following up in Europe and the US, in response to the interest shown in the invention.

As far as Pacey Lowrie can tell, his only competitor depends on a magnet being drawn across the eye.

Licensing

Ultimately, he is aiming to sell his innovation as a kit under licence for manufacture round the world. This includes markets like South Africa and India, where a much higher proportion of the population has only one eye through lack of proper medical care.

Pacey Lowrie explains:

I have been fortunate to work with NTU. Before I made everything by hand in wax and plastic, so knew nothing about how smart materials might be used. Now we are close to giving the impression that a pupil in a false eye is dilating as normal.

For Breedon, the joint patent is underpinning a local collaboration and opening up opportunities for his students. The next stage will be to investigate how the technology can be simplified and miniaturised.

Those directly involved in the research have had their name included in the patent, giving clear proof of how they are making an impact.

Breedon says:

It is a capability that research bids now expect. Patents might not be mandatory, but you want to write them into your application.

Dangers

At the same time, he is aware of the dangers in creating a drawer full of ones that are never used.

We have to work out what is going to happen afterwards and how ideas are going to be taken forward.

So he is by no means wedded to 50/50 in principle.

We take a look at the bigger picture. If a patent is sensitive commercially, we will hand it over to our partner, then negotiate a follow-up collaborative agreement.

He is currently in discussions with the NHS about two patents for re-animating the faces of patients who have suffered a stroke. In one case, a hospital spin-out is likely to own the patent. In the other, NTU will retain the rights in full.

Either way, any financial rewards will go first to the university. If an innovation takes off commercially, a share of the proceeds could ultimately go to Breedon and his colleagues.

For him, however, the principal motivation lies in how patents can connect knowledge to the market and create a series of win/win partnerships.

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