How to Protect and Exploit my Research Results. Júlia Nebot Vilà

Transcription

1 How to Protect and Exploit my Research Results Júlia Nebot Vilà

2 How to do with PhD results? License agreement Spin-off company creation You can be an entrepreneur! 2/44

3 How to license your PhD results? Develop an attractive technology offer Offer your technology on technology offer platforms Contact with potential companies Develop a prototype of your product Create your own company (Spin-off) 3/44

4 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 4/44

5 Who can help you? Entrepreneurship grants Consell Social URV Ajuntament de Tarragona Ajuntament de Reus URV Valorization unit URV Entrepreneurship Chair 5/44

6 Who can help you? Market Assesment Program EADA ACCIÓ 6/44

7 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 serveis/programa-empenta.jsp?utm_campaign=act&utm_source=nsa15-147&utm_medium=text_link 7/44

8 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 /44

9 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 /44

10 Overview of intellectual property Legal right What for? How? Patents New invention Application and examination Copyright Original creative or artistic forms Exists automatically Trade marks Distinctive identification of products or services Use and/or registration Registered designs External appearance Registration Trade secrets Valuable information not known to the public Reasonable efforts to keep secret 10/44

11 Intellectual Property (IP) COPY RIGHTS INDUSTRIAL RIGHTS LITERARY, ARTISTIC AND SCIENTIFIC ORIGINAL CREATIONS BOOKS, MUSICAL COMPOSITIONS, AUDIOVISUAL WORKS, SCULPTURES, PAINTINGS, COMICS,PHOTOGRAPHIES, COMPUTER PROGRAMMS DERIVATIVES WORKS TRANSLATIONS, REVISIONS, COMPENDIUMS, SUMMARIZES, MUSICAL ARRANGEMENTS COLLECTIONS ANTHOLOGIES AND DATABASES TECHNICAL INNOVATIONS PATENTS AND UTILITY MODELS ESTHETIC DESIGN INNOVATIONS INDUSTRIAL DESIGNS DISTINCTVE IMAGE INNOVATIONS TRADE MARKS AND TRADE NAMES 11/44

12 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 12/44

13 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) 13/44

14 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 /44

15 Solutions found in patent documents 90% Free to use 10% Protected You can find very good solutions for free! Source: Professor Helge B. ohausz /44

16 Searching for a patent can be very easy Free worldwide patent information is available at 16/44

17 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/ Researcher Lab. Technician CEO Software developer 17/44

18 INDUSTRIAL RIGHTS 18/44

19 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 19/44

20 Software vs Computer-implemented inventions Software (SW): Computer programs, including procedures, algorithms and functions to be carried 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 of a computer, computer network or other programmable instrument, and having one or more characteristics 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.

21 Software patentability: Europe vs USA USA Patent Europe Patent Software Computerimplemented inventions Computer-implemented inventions can be patented in Europe if they have technical nature involving 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 beyond the normal physical interactions between program and computer

22 Patent laws and regulations (I) Europe: The European Patent Convention (EPC) Spain: Patent Law (No. 11/1986 of March 20) Internal rules (companies, universities, research institutes, ) Regulations on industrial and intellectual property of the URV 2_propia/auniversitaria/investigacio/html/norm_pro_ind_int.htm 22/44

23 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 SoA 1 report 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 1 State of the Art 23/44

24 What not to do when seeking patent protection Not publication prior of filling i.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! 24/44

25 What not to do when seeking patent protection 25/44

26 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 the period for accessing to the national stages There are no international or worldwide patents! 26/44

27 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 27/44

28 The life of a patent Month 12 Access to national stages Year 4-5 Patent grant Year 20 End of patent's life Month 0 Priority patent application Month 18 ISR 28/44

29 The life of a patent Month 12 Access to PCT stage Month Access to national stages Year 20 End of patent's life Month 0 Priority patent application Month 18 ISR Year 4-5 Patent grant Patents are not eternal! 29/44

30 Optional The value of European patents Percentage of patents (%) Value of the patent ( ) Source: Ceccagnoli et al, /44

31 COPY RIGHTS 31/44

32 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 32/44

33 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 33/44

34 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 34/44

35 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 35/44

36 The life of a copyright - author Year 70 After autho s death Year 0 Work creation *80 years for decased before december 7 th 1987 (Disposición transitoria 4ª Ley de la Propiedad Intelectual) Copyrights are not eternal but it s life is longer than patent life! 36/44

37 The life of a copyright - owner Year 70* After work s creation Year 0 Work creation Copyrights are not eternal but it s life is longer than patents life! 37/44

38 Alternatives to the Copyright: the Copyleft (i) Copyright is a legal right created by the law of a country that grants the creator of an original work exclusive rights for its use, reproducing, adapting, or distributing copies. This is usually only for a limited time. The exclusive rights are not absolute but limited by limitations and exceptions to copyright law, including fair use. Copyleft is a form of licensing, and can be used to maintain copyright conditions for works. In contrast with copyright, under copyleft, an author may give every person who receives a copy of the work permission to reproduce, adapt, and/or distribute it, with the accompanying requirement that any resulting copies or adaptations are also bound by the same licensing agreement. 38/44

39 Alternatives to the Copyright: the Copyleft (ii) Creative Commons Free software / open source software 39/44

40 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 40/44

41 IP IN THE URV 41/44

42 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. 42/44

43 How to proceed in the URV - Get in touch with the UV-URV: unitat.valoritzacio@fundacio.urv.cat - Learn the rules on industrial and intellectual property of the URV : o/2_propia/altres/html/norm_creacio_emp.htm - Fill in the application form of protection results. 43/44

44 Companies with IP URV in the core business 44/44

45 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