How to Protect and Exploit my Research...

How to Protect and Exploit my Research Results

Júlia Nebot Vilà[email protected]

977558211

2/44November 13th 2015

How to do with PhD results?

Spin-off company creationLicense agreement

You can be an entrepreneur!


How to license your PhD results?

• Develop an attractive technology offer• Offer your technology on technology offer platforms www.innoget.com• Contact with potential companies• Develop a prototype of your product• Create your own company (Spin-off)


Who can help you?

• Knowledge Industry Programme– Llavor (Idea) – First Assessment Phase – Protection of knowledge– Product – Second Assessment Phase – Proof of concept– Market – Early-stage Capitalization Phase – start-up business activity and production

http://universitatsirecerca.gencat.cat/en/03_ambits_dactuacio/Transferencia-de-coneixement/programa-industria-del-coneixement/index.html


Who can help you?

• Entrepreneurship grants– Consell Social – URV– Ajuntament de Tarragona– Ajuntament de Reus– …

• URV Valorization unit

• URV Entrepreneurship Chair


Who can help you?

• Market Assesment Program EADA – ACCIÓ

http://www.eada.edu/en/companies/centro-de-emprendedores/map-eada-accio


Who can help you?

• TechFair – IESE – Technology Fair to present your Technology and/or your entrepreneur idea

• Programa Empenta Coaching, Business Plan and Public and Private Grants

– Disruptive Technologies – university Spin-off companies’– Innovative Solutions

http://accio.gencat.cat/cat/innovacio-tecnologica/valoritzacio-tecnologica/programes-serveis/programa-empenta.jsp?utm_campaign=ACT&utm_source=nsa15-147&utm_medium=text_link


Real case – undergraduate student

• Detection of a technology: July 2012• Study of the possible patentability: July 2012• Patent application: February 2013• Application for extension PCT: February 2014• Meetings with potential licensors : October 2014-October 2015


Real case – graduate student with license

• Detection of two technologies: April 2013• Study of the possible patentability: September 2013• Proposal of creation of Spin-off

– Development of a business plan– Contract negotiation between partners (pact between partners)– Technology transfer’s contract negotiation (license)

• Patent applications : November 2013• Creation of the company: December 2013• License of the technology: December 2013• New business partners and capital increase: August 2014


Overview of intellectual propertyLegal right What for? How?

Original creative or artistic forms

Trade marks Distinctive identification of products or services

Use and/or registration

Registered designs Registration

Patents New invention Application and examination

Exists automatically

Trade secrets

External appearance

Valuable information not known to the public

Reasonable efforts to keep secret

Copyright


Intellectual Property (IP)

INDUSTRIAL RIGHTS

TECHNICAL INNOVATIONSPATENTS AND UTILITY MODELS

ESTHETIC DESIGN INNOVATIONSINDUSTRIAL DESIGNS

DISTINCTVE IMAGE INNOVATIONSTRADE MARKS AND TRADE NAMES

COPY RIGHTS

COLLECTIONS

ANTHOLOGIES AND DATABASES

TRANSLATIONS, REVISIONS, COMPENDIUMS, SUMMARIZES, MUSICAL ARRANGEMENTS

LITERARY, ARTISTIC AND SCIENTIFIC ORIGINAL CREATIONS

DERIVATIVES WORKS

BOOKS, MUSICAL COMPOSITIONS, AUDIOVISUAL WORKS, SCULPTURES, PAINTINGS,

COMICS,PHOTOGRAPHIES, COMPUTER PROGRAMMS


Some IP found in a mobile phone

Trade marks:• Manufactured by “Apple"• Product “iPhone 6"• Software “iOS"

Patents:• Data-processing methods• Semiconductor circuits• Chemical compounds• …

Copyrights:• Software code• Instruction manual• Ringtone• …

Trade secrets:?

Designs (some of them, registered):• Shape of overall phone• Arrangement of buttons in oval shape• 3D wave form of buttons

© Apple


Before starting R&D, you need to do some search

25% of all R&D efforts ….

…. are wasted every year on inventions that have already been invented

Do not start your R&D until you have done a good search!

Source: ProVendis (on German R&D investment)


Much information only available in patents

Published elsewhere

Published in patents

80% found only in patents!

Where do secretive competitors publish their R&D?

Source: Bregonje, M. (2005): Patents: A unique source for scientific information in the chemical industry?, WPI, No. 27, pp. 309-315.


Solutions found in patent documents

10%Protected

90%Free to use

You can find very good solutions for free!Source: Professor Helge B. ohausz. 2004


Searching for a patent can be very easy…

Free worldwide patent information is available at http://ep.espacenet.com


Inventorship, authorship and ownership

• Identify as inventors only the people who really are the inventors

• Identify as authors only the people who really are the inventors

• Identify the owner of the invention:– The ownership of the labor inventions is the company. See articles 15, 16, 17, 18, 19

and 20 of the Patent Law no.11/1986 http://www.boe.es/boe/dias/1986/03/26/pdfs/A11188-11208.pdf

CEO Software developerLab. TechnicianResearcher


INDUSTRIAL RIGHTS


What can be patented at the EPO and the OEPM?

Inventions that are…• new to the world (no previous public notice)• inventive (i.e. not an “obvious” solution)• susceptible of industrial application

What cannot be patented at the EPO and the OEPM?

• Discoveries• Simple ideas• Artistic creations• Software• Business methods• Medical Therapies• Plant varieties

See Articles 52 and 53 EPC in http://www.epo.org/epc

Software vs Computer-implemented inventions

Software (SW): Computer programs, including procedures, algorithms and functions to becarried out with a computer.• Computer program: any sequence of instructions to be used directly on indirectly in a computer system

to perform a function or task or to obtain a specific result, whatever its form of expression or fixation,without distinguishing between technical or non-technical work-function-results.

• Word processing• Graphical user interfaces• Double click mouse function,• …

Computer-implemented inventions (CII): Invention whose implementation requires the use ofa computer, computer network or other programmable instrument, and having one or morecharacteristics that are carried partly or totally by a computer program.• Industrial process automation system.• Navigation systems.• Medical vision technology.• New drugs development.• Driver aids and safety devices in cars.• …

Software patentability: Europe vs USA

USA Patent Europe Patent

Software √Computer-implementedinventions

√ √

Computer-implemented inventions can be patented in Europe if they have technical natureinvolving a technical contribution to the state of the art:• Solves a technical problem• It produces a technical effect in solving the problem• The provided solution requires technical consideration involves a technical problem

Computer programs are patentable in Europe if they have additional technical effects beyondthe normal physical interactions between program and computer


Patent laws and regulations (I)

• Europe: The European Patent Convention (EPC) http://www.epo.org/patents/law/legal-texts/epc.html

• Spain: Patent Law (No. 11/1986 of March 20) http://www.boe.es/boe/dias/1986/03/26/pdfs/A11188-11208.pdf

• Internal rules (companies, universities, research institutes, …)

– Regulations on industrial and intellectual property of the URV http://wwwa.urv.cat/la_urv/3_organs_govern/secretaria_general/legislacio/2_propia/auniversitaria/investigacio/html/norm_pro_ind_int.htm


Patent laws and regulations (II)

• Law of Sustainable Economy (No. 2/2011 of March 4)– It encourages the use of electronic resources for applications and patent

procedures– Advancement of patent publication, regardless of the existence of the SoA1

report http://www.boe.es/boe/dias/2011/03/05/pdfs/BOE-A-2011-4117.pdf

• Science, Technology and Innovation Law (No. 14/2011 of June 1) – It regulates the participation of researchers of the public sector on the benefits

of research results• Non-wage or salaries benefits• It states that researchers have to make sure their institution knows everything related

to the results obtained and collaborate in its protection, transfer and dissemination http://www.boe.es/boe/dias/2011/06/02/pdfs/BOE-A-2011-9617.pdf

1State of the Art


What not to do when seeking patent protection

• Not publication prior of fillingi.e. no article, press release, conference presentation/poster/proceedings or blog entry

• Not sale of products incorporating the invention prior to filing

• No lecture or presentation prior to filling except under a non-disclosure agreement (NDA)

• Seek professional advice soon

• File before others do!


What not to do when seeking patent protection


Where can we apply for a patent?

• National patent offices (In Spain OEPM)– National patents are only valid in the country of grant– Priority right of a year for later applications

• European patent office (EPO)– The European patent is equivalent to national patents in the countries in which it is

granted (the applicant chooses the countries)

• Under the Patent Cooperation Treaty – PCT– A single application serves up to 148 countries provisionally– It allows to increase until month 30-31 the period for accessing to the national stages

• There are no international or worldwide patents!


Which information does a patent include?

• Bibliographic information– Inventor, owner, date of submission, technological class, etc.

• Summary– Around 150 words to help searching other patent applications

• Description– Additional and clarifying information

• Claims– Define the field of patent protection. What it’s not included in the claims it’s not

protected.

• Figures– They illustrate the claims and description


The life of a patent

Month 0Priority patent

application

Month 12Access to nationalstages

Year 20End of

patent's life

Year 4-5Patent grant

Month 18ISR


The life of a patent

Month 0Priority patent

application

Month 12Access to PCT stage

Year 4-5Patent grant

Year 20End of

patent's life

Month 30-31Access to nationalstages

Patents are not eternal !

Month 18ISR


The value of European patents

Value of the patent (€)

Per

cent

age

of p

aten

ts (%

)

Optional

Source: Ceccagnoli et al, 2005


COPY RIGHTS


About a copyright

• Generated with the creation

• The authorship is related to the person who ‘wrote’

• Valid whilst the author is alive and 70 years after his death

• Moral rights:– Publication of the work and its way– Withdrawal of the publication of the work– Access to the original copy

• Exploitation or inherited rights:– Public communication– Duplications– Distribution– Transformation


What can be a copyright?

• Discoveries• Simple ideas• Artistic creations• Computer software• Databases• Business methods• Medical Therapies• Plant varieties

Requirements:• Human work• Creation• Literary, artistic and/or scientific creations• Expressed by any way or support


Where can we register a copyright?

• I-DEPOT – BOIP - BENELUX Office for Intellectual Property

• Registre de la Propietat Intel·lectual de la Generalitat de Catalunya– Culture Department – Generalitat de Catalunya

• Notary morgue


Which information can a work register include?

• A copy of the work– Computer program: font code, users manuals, auto run copy, …

• Identification of the authors

• Identification of the owners


The life of a copyright - author

Year 0Work

creation

Year 70After

autho’s death

Copyrights are not eternal but it’s life is longer than patent life!

*80 years for decased before december 7th

1987 (Disposición transitoria 4ª Ley de laPropiedad Intelectual)


The life of a copyright - owner

Year 0Work

creation

Year 70*After

work’s creation

Copyrights are not eternal but it’s life is longer than patents life!


Copyleft is a form oflicensing, and can beused to maintain copyright

conditions for works. In contrast withcopyright, under copyleft, an authormay give every person who receivesa copy of the work permission toreproduce, adapt, and/or distribute it,with the accompanying requirementthat any resulting copies oradaptations are also bound by thesame licensing agreement.

Copyright is a legal rightcreated by the law of acountry that grants the

creator of an original work exclusiverights for its use, reproducing,adapting, or distributing copies. Thisis usually only for a limited time. Theexclusive rights are not absolute butlimited by limitations and exceptionsto copyright law, including fair use.

Alternatives to the Copyright: the Copyleft (i)


Alternatives to the Copyright: the Copyleft (ii)

• Creative Commons

• Free software / open source software


Alternatives to the Copyright: the Copyleft (ii)

• Open source software Open domain software

• Creative Commons principles:

≠

BY means 'attribute‘ acknowledge the creator

NC means 'non-commercial‘

ND means 'non-derivative‘ can not manipulate

SA means 'share alike‘ same licenses type


IP IN THE URV


How to proceed in the URV

First protect, then publish

- Before publishing results, it should be measured if they are likely to be protected.

- You must inform the URV Valorization Unit (UV-URV) about any new invention.

- In the UV-URV we work to transfer the results to the socioeconomic sectors interested in their exploitation.


How to proceed in the URV

- Get in touch with the UV-URV: [email protected]

- Learn the rules on industrial and intellectual property of the URV : http://wwwa.urv.cat/la_urv/3_organs_govern/secretaria_general/legislacio/2_propia/altres/html/norm_creacio_emp.htm

- Fill in the application form of protection results.


Companies with IP URV in the core business

How to Protect and Exploit my Research Results

Bear in mind the possibility of exploiting your results!

Be entrepreneur!

Thank you very much!Júlia Nebot Vilà

[email protected]

How to Protect and Exploit my Research...

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