New Zealand: James & Wells sheds light on IP for WaikatoLink
Last Updated: 30 November 2011

Stunning examples of New Zealand's clean technology innovation, such as Dr Mike Duke's Solenza integrated solar energy solution, require equally clever intellectual property thinking to be successfully commercialised.

WaikatoLink Ltd, the commercialisation1 arm of the University of Waikato, has had a long relationship with James & Wells Intellectual Property2.

WaikatoLink brought James & Wells into the loop in 2005, when it became clear Dr Mike Duke's invention3 had the potential to revolutionise the solar energy markets - commercial, industrial and household - by dispensing with unsightly 'bolt on' solar energy panels, and instead, providing a seamless solution integrated into a buildings' roofing structure.

James & Wells' IP4 strategists have monthly review meetings with WaikatoLink's IP team.

James & Wells Principal Dr Gary Betteridge, who works extensively with WaikatoLink and has experience with commercialization of University IP, says good, regular communication with a university based company is essential.

James & Wells provides high level strategic IP advice at regular intervals for selected WaikatoLink projects.

WaikatoLink's CEO, Duncan Mackintosh says James & Wells' on-going expertise is invaluable: "Inventing great products is one thing, but to take them to market and protecting our valuable IP requires strategic thinking and knowledge. James & Wells has assisted that thinking consistently."

Solenza's solar energy solutions can be retrofitted into existing roofing structures, and provide increased power and water heating efficiencies over traditional solar energy panels.

Following discussions with WaikatoLink, James & Wells filed patent5 applications in New Zealand and internationally for two aspects of the invention - a building integrated combined photovoltaic cell and solar thermal collector arrangement (BIPVT), and a building integrated solar thermal collector (BIT).

Gary Betteridge says: "It is essential that we be involved from an early stage, and certainly before there is any public disclosure. It is also critical for the inventors and applicants to work closely with us throughout the lifetime of the project, and that lines of communication are always kept open."

"WaikatoLink's expertise and experience in commercialising research-based opportunities, and its understanding of the importance of IP, means it has been an excellent client to deal with and its products are consistently successful in returning value to the university."

A version of this case study first appeared in the NZ Herald's Element Magazine.

Footnotes

1 Refers to the process of introducing a new product or service to the marketplace (whether in New Zealand or overseas). For the purposes of a patent application commercial working can include taking orders for a product or service (even if in confidence). It is important to understand that commercial working of an invention before a patent application is filed may invalidate that patent application (see validity below).

2 Refers to the ownership of an intangible thing - the innovative idea behind a new technology, product, process, design or plant variety, and other intangibles such as trade secrets, goodwill and reputation, and trade marks. Although intangible, the law recognises intellectual property as a form of property which can be sold, licensed, damaged or trespassed upon. Intellectual property encompasses patents, designs, trade marks and copyright.

3 The product of the creative process of inventing. In intellectual property law "invention" is a legal term usually describing patentable subject matter. Under current New Zealand legislation that subject matter includes any manner of manufacture which is new and involves an inventive step. However, certain types of invention are excluded from patentability. They include inventions which are contrary to morality (for example weapons of mass destruction) and methods of medical treatment (on public policy grounds that such methods should be available for health practitioners to use to the benefit of all society).

4 Refers to the ownership of an intangible thing - the innovative idea behind a new technology, product, process, design or plant variety, and other intangibles such as trade secrets, goodwill and reputation, and trade marks. Although intangible, the law recognises intellectual property as a form of property which can be sold, licensed, damaged or trespassed upon. Intellectual property encompasses patents, designs, trade marks and copyright.

5 A proprietary right in an invention which provides the owner with an exclusive right for up to 20 years to make, sell, use or import the invention. In exchange for this monopoly the patent is published so that others can see how the invention works and build on that knowledge. The patented invention may also be used by the public once the patent lapses.

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