In order to commercialise IP, it usually needs to be protected. 

A patent is a registered piece of intellectual property (IP) that describes an invention and gives its owner the exclusive legal right to make, use or sell it for a limited period of time.  

The criteria we use to decide whether to patent IP that Imperial owns include the laws around patents, which determine whether an invention legally can be patented, and the College’s own criteria for determining whether to move forward with the patent process. Other forms of IP protection are also available.  

What are the criteria for patenting? 

• Is it new? The invention must be ‘novel’ – it cannot be something that someone has already patented, or that is already in the public domain.  
• Is it inventive? Something that would be obvious to someone knowledgeable in the field cannot be patented. (This is the hardest of the criteria to assess – our specialist teams can provide guidance.)  
• Can it be made and used? It must have a tangible application – a piece of writing or a mathematical formula cannot be patented. (Software must have a ‘technical purpose’ to be patented. Some technical processes are also eligible, although ‘methods’ generally are not.)  
• Is there enough data yet to show that it works? The timing for filing a patent is key to passing the legal requirement for ‘sufficiency’, which only allows a patent application to be granted if it is filed with the experimental evidence needed to demonstrate the invention works. Results generated after the patent filing date cannot be relied on. 
• Does it have sufficient commercial potential?  To decide whether to proceed with patenting an eligible invention, Imperial Enterprise will assess its commercial potential. This involves considering, for example, whether the invention fulfils a need that people or businesses will want to pay to address, whether it’s a breakthrough or incremental improvement, and how much competition there is likely to be in its sector. 

Publishing about a new invention can make it ineligible to be patented, so it’s essential that you speak to your faculty’s Industry Partnerships and Commercialisation (IPC) team as soon as possible. 

If the College decides to file a patent application, it will cover all the costs of the process, and our specialist team will manage the process.  

When that process is complete, the IP will then be available to be licensed, either to a spinout company or an external company. 

What if the College doesn’t want to pursue the patent?

As the College has finite resources for protecting IP, some inventions are not selected by the College for patenting. If the College decides not to pursue the patent, it will offer the ownership of the IP to the academic, so that they can take it forward to be patented and pursue its commercial potential themselves.  

Similarly, the College may decide to give up a patent it has previously acquired (the ‘abandonment process’) if it decides that it is no longer commercially viable to pursue, in which case the inventor would be offered the patent.