Research Valorization Process.

Transcription

1 Research Valorization Process. An overview of the key points of Research Valorization Process and Intellectual Property Rights to protect the results and add value in research (patents, trade secrets, copyrights, etc.) OCT 18 th : Seminar on Patents and Knowledge Assessment. ICMAB Elisabet del Valle, Onalabs

2 An introduction to Research Valorization Process

3 An introduction to Research Valorization Process WHAT IS? The process of value creation from knowledge, by making it applicable and available for economic or societal utilisation, and by translating it in the form of new business, products, services, or processes. * RESEARCH TECHNOLOGY PUBLIC ADMINISTRATION COMPANIES (1) IDENTIFICATION (2) MATURATION (3) PRE-COMMERCIALIZATION EXISTING BUSINESS (4) COMMERCIALIZATION INNOVATION DISCLOSURE ASSESSMENT PROTECTION MARKETING TO FIND A LICENSEE LICENSING COMMERCIALIZATION NEW COMPANY VALORIZATION AGENTS PATENT OFFICES LAWYER FIRMS (5) FOLLOW-UP REVENUE GROWTH BUSINESS CONSULTING *Waas, 2010 Image Source: Innovation Unit UPC INTERACTION REINVEST IN RESEARCH AND EDUCATION COLLABORATION

4 An introduction to Research Valorization Process WHY IS IT SO IMPORTANT? Transform knowledge into new products and services for the society Stimulate entrepreneurship by creating spin-off Create successful collaborations between researchers and industries in order to advance the knowledge in a particular field or to further develop a technology. Industry partners can also reduce the costs incurred during their research and development stage by licensing technology. The university or public research centers can use the licensing revenue to support further research and education at the same institution Helps the promotion of highly qualified jobs. Stimulate socio economic development

5 An introduction to Research Valorization Process WHEN DO IT? You have to take in mind that unlike what is usually said: The Valorization process doesn't start once you have a research result starts before establishing a new research line. Always

6 An introduction to Research Valorization Process WHO? you! with support from Technology Transfer Office

7 An introduction to Research Valorization Process The valorization process of public scientific research has some specificities: They must publish without delay to participate in world open science network consequently most inventions are very early stage and need further development to become economically attractive. Public research centres cannot exploit directly inventions therefore, they must license out to a third party or create an spin-off. The publish requirement leads to don t relay on trade secrets so, most of time patenting is the only way to reconcile publication with innovation. For all that, Intellectual Property become a key point in the Research Valorization Process

8 Introduction to Intellectual Property Assets

9 Introduction to Intellectual Property Assets Types of Intellectual Property Assets: creations of the mind Patents New inventions Industrial Property Trademarks Registered designs Distinctive identification of products or services External appearance Trade secrets Valuable information not known to the public Copyright Original creative or artistic forms

10 Introduction to Intellectual Property Assets Trademarks Distinctive identification of products or services Names, logos, colours applied to the owner s products or services, which distinguish them from products or services provided by competitors No expiration while paying fees Requirements for a good trademark Article 7 of the Community Trade Mark Regulation (Absolute Grounds for Refusal) Distinctive (unique) Not descriptive Not similar or identical

11 Introduction to Intellectual Property Assets Registered designs External appearance External appearance of a product Need to be original and distinctive Artistic aspects also protected by copyright No protection for technical aspects

12 Introduction to Intellectual Property Assets Trade secrets Valuable information not known to the public Cover information not known to the public Subject to reasonable efforts to maintain secrecy Protected until is it public No protection against: - Reverse-engineering - Competitors who independently make the same invention Some examples - Chemical formula and preparations - Manufacturing process - Use of microorganisms - Others like: clients list, providers listname, price of products

13 Introduction to Intellectual Property Assets Copyright Original creative or artistic forms Does not need to be registered Automatically exists when the work is created Music, photos, documents, leaflets, software, web, ringtone, smell of a perfume, etc. Last 70 years after death of last author (joint authorship) All over the world

14 Introduction to Intellectual Property Assets Patents New inventions What is? A patent is a legal title granting its holder the right to prevent third parties from commercially using an invention without authorisation. In return for this protection, the holder has to disclose the invention to the public. Protection is granted: - for a limited period, generally 20 years - for a specific geographic area What rights does a patent confer? Right to prevent third parties from commercially exploiting an invention without previously authorisation Not a right to use instead a patent protects an invention by giving the owner of the patent the right to stop anyone from making or using the invention without their consent Right to assing the ownership or license a patent

15 Introduction to Intellectual Property Assets Patents New inventions What can be patented? any inventions in all fields of technology (new products, new uses of known products, Machines, tools and dispositions to obtain or to make a product, Methods, processes and procedures to obtain or manufacture a product) provided that they are: - new - involve an inventive step - susceptible of industrial application New New at the date of filing the patent application New if it does not form part of the "state of the art" "State of the art" means everything made available to the public before the filing date of the European patent application There must have been no public disclosure of an invention before the filing date of the patent application Inventive step (a subjective criteria) When it is not obvious to a person skilled in the art having regard to the state of the art Industrial application The invention must have at least one practical purpose and must be reproducible There is no evaluation of quality or economical factors Only the technical qualities are relevant

16 Introduction to Intellectual Property Assets Patents New inventions What is not considered as an invention? Ideas, scientific theories and mathematical methods. Literary, artistic or scientific works and aesthetic creations. Plans, rules and methods for intellectual activities, games or economical activities, and software. Ways to present information and methods of surgical treatment.

17 Introduction to Intellectual Property Assets Patents New inventions Patent application routes: Via national patent offices: - OEPM (Oficina Española de Patentes y Marcas) - One application per country (Spain) - One patent prosecution process - Only national protection (Spain) Via PCT (Patent Cooperation Treaty): - Only one application - Multiple patent prosecution processes (PCT is not a complete patent prosecution process) - Protection in each country (the applicant can delay applications in each country up to 30 months from the date of priority) Via EPO (European Patent Office): - Only one application - Only one prosecution process - Protection in european countries applied for

18 Introduction to Intellectual Property Assets Patents New inventions

19 Introduction to Intellectual Property Assets Patents New inventions What are the Parts of a Patent? Abstract Background of the Invention Summary of the Invention Detailed description or specification Fully discloses what the invention is How it is made? How it can be used? Figures with brief descriptions Examples Claim(s): sets the legal boundaries of protection Independent Dependent

20 10 Tips to succeed in the research valorization process

21 1. Plan your project involve all the stakeholders Just like any project, tech transfer requires proper planning and risk management. Foresee all the stakeholders that will be involved in the value chain to valorize your project.

22 2. Before start a research line do a patent search Espacenet

23 3. Be cautious with confidential information Doctoral Thesis (resgister!) What destroys novelty requirement? Before the application date Any publication Abstracts Congress Oral dissemination Accessability

24 4. Be diligent time is against us R+D Public Research Center Company Idea Patent Prototyp Product Protection of the technology Promotion and Valorization Comercialization by licensing License Priority PCT Nacional Phases 30 months

25 The patent costs increase a lot along the years 5. Foresee the patent costs Royalty income Comercializati on Patent granted Costs and economic value Agreement signature Licensing negotiation NDA / MTA Promotion Leaflet Scale-up Prototype Proof of concept Results National Phases IBI/IET PCT Patent application Time line Research

26 6. Who and how do I contact?...think strategically Important!!! R&D Director General Manager They have different interests! Excellent technology Company needs Generate expectations explain de technology Alert, if you have to speak with companies sign first a NDA!!

27 7. Do not anticipate the price of license there isn t a standard price There is a common practice to say the future license could be a 5% of royalties of net sales There are a lot of factors that influence in the economic value decision: - The technology - The market - The potential licensee - Once you have said a price is very difficult to increase it value. So, let your Technology Transfer Office take this decision.

28 8. Delays the most you can the publication One of the most difficult things to license technology from universities or research public centres is the mature of the technology + Probability of technology transfer success Transferring early stage technology is more difficult as there is more risk for the company So, it is better to apply for a patent once you have a prototype than if you have just the proof of concept. - TRL:Technology Readness Level

29 9. Collaborative research who has the ownership of the future results? + Negotiation Room Public Research Center (PRC) owns full ownership: Company will must sign a licenes agreement Co-ownership between PRC and company: any co-owner can exploit the results by itself, just will need your consent if they want to sublicense. - Company owns full ownership: we haven t any right to recieve economical retorn for this explotiation, if we haven t especified it in the agreement. Important!!! It is very strategic to negotiate correctly the clause of IP in the R&D agreements (with companies and entities). Especially in EU projects!

30 10. If you really believe in science just enjoy it! Do not see technology transfer and valorization actions as a bureaucratic thing, because this part is necessary if you want to see your research results covering the society needs!

31 Thanks! Elisabet del Valle OCT 18 th : Seminar on Patents and Knowledge Assessment. ICMAB Elisabet del Valle, Onalabs