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Intellectual Property in Nuclear Decommissioning

Sarah Phillips & James Ford20 Feb 2019

© Abel & ImrayIntellectual Property in Nuclear Decommissioning

Opportunities in Nuclear


+ Your Intellectual Property (IP) is valuable

+ Others are protecting their IP+ Parts of the Nuclear industry have

been slow to react+ There are great opportunities for

your business



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European patent applications 1980 onwards(new filings per year)



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European patent applications 2008-2018(new filings per year)

Aeronautical equipment

Nuclear Decommissioning

Relevance to Decommissioning

+ New technologies:– Robotic arms for remote access– Packaging for hazardous waste– Treatment of hazardous waste

+ New processes:– Manufacturing techniques – Methods for accessing and/or

removing waste

+ New materials for harsh environment

+ Anything that solves a problem!


+ Make money through:

– Monopoly on ‘solving the problem’ • Higher product selling price

• Leverage in securing contracts

– Licensing of IP – Technology transfer to/from other industries– Licensing of IP – To third parties in other jurisdictions – Sale of IP

– Attracting investment – investor due diligence

– Tax relief (“Patent box”)


Relevance to Decommissioning

Types of IP?

+ Patents

+ Trade Secrets

+ Know-how

+ Designs

+ Trademarks

+ Passing-off


What is a patent?

+ Exclusive right

+ Concerned with how things work

+ Just one form of IPR

+ Limited monopoly

+ Territorial right

+ Time-consuming and not cheap


+ GB total cost approx. £10k

– draft and file approx. £4-5k+

– through to grant approx. £5k

+ US, Europe, China, Japan total cost approx.£10k-£25k each

Typical costs


What does it look like?

+ Long technical document:

– Detailed description of at least one way of working the invention

– Claims

– Figures

+ Can protect components, manufacturing techniques, processes


Your idea will need to be…

+ Novel

+ Inventive

+ Not in an excluded category e.g.:– Discoveries – Scientific theories– Presentation of information– Computer programs?

+ Patent can be attacked for lack of these


Process for obtaining a patent


+ Overview of process:+ Optional search & Filing+ Patent Office search+ Make any overseas applications+ Publication+ Examination & Grant

+ Can easily take 4-5 years for grant

+ But, pending is good!

+ Be strategic – when is good time to file?

Where to file?

+ Competitors?

+ Collaborators?

+ Cost?

+ Easy to obtain patent?

+ Easy to enforce?

+ Remember 20 year lifespan


Ownership

+ Inventorship v ownership

+ Rights flow from inventor - devisor of invention - to:– Another party if assigned– Employer if devised in course of

employment

+ Watch out for commissioned works trap!

+ Be wary of joint ownership - tricky


A potential pitfall!

+ A patent does NOT give you the right to use your invention

+ But, you can stop others using it commercially

+ In return for a full disclosure of the concept


What can you do about other patents?

+ Know what is out there (FTO search) THEN:

– Proceed at risk

– Design around

– Attack the patent

– Seek a license or buy the patent

– Change country

– Abandon the project


Some key messages

+ Be strategic

+ Understand patent protection vs. Freedom to operate

+ Check you own what you think you own

+ Keep your inventions confidential prior to filing patent application

+ Talk to us!


Common misconceptions

+ “Of course we are free to make it – we’ve got it patented!”

+ “We can’t patent this – it’s not ground-breaking”

+ “We don’t need patents - the barriers to entry are too high already”

+ “This is a real winner – let’s get a worldwide patent!”

+ “Patents are a waste of time – we can’t afford to sue anyone”


Reminder: Opportunities in Nuclear


+ Your Intellectual Property (IP) is valuable

+ Others are protecting their IP+ Parts of the Nuclear industry have

been slow to react+ There are great opportunities for

your business

London20 St. Andrew StreetEC4A 3AG, UKT 020 7242 9984 F 020 7242 9989

Cardiff3 Assembly SquareBritannia QuayCF10 4PL, UKT 029 2089 4200 F 029 2089 4201

BathWestpoint BuildingJames Street WestBA1 2DA, UKT 01225 469 914 F 01225 338 098

www.abelimray.com


[email protected]

james.ford@ abelimray.com

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