PROTECTION AND COMMERCIALIZATION OF RESEARCH RESULTS IN CSIC

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1 PROTECTION AND COMMERCIALIZATION OF RESEARCH RESULTS IN CSIC Deputy Vice-presidency for Knowledge Transfer Dr. Javier Maira Vidal Head of Commercialization Unit

2 Deputy Vice-presidency for Knowledge Transfer (VATC) Management: Deputy Vice-president for Knowledge Transfer Unit of Protection of R&D Results Number of filed patents Unit of Commercialization Number of signed license agreements Unit of Contract Number of managed contracts Unit for support of Spin-off companies Number of created spin off companies Unit of Quality and Database management

3 Deputy Vice-presidency for Knowledge Transfer RTD Project Protection of the results Unit of Protection of R&D Results Unit of Commercialization Promotion de la technology Negotiation with the company Find a company interested Technology Transfer Agreement Exploitation of the technology Market

4 Who owns the research results obtained in CSIC s laboratories? New invention in a Public Research Organization According to the Spanish Patent Law: Researchers are the inventors CSICistheowneroftheresults Researchers shall inform TTO by submitting Invention Disclosure to patentes@csic.es Invention disclosure: confidential document written by the inventors to inform the TTO, which shall determine whether protection should be sought.

5 Where can be found CSIC invention disclosure Form?

6 Which information shall be included in the invention Disclosure Form? INVENTION DISCLOSE - General description of the invention. - Inventorship distribution: list the inventors and their contribution(%). - Co-owners(if it is applicable). - Questions about: - Project in which results were generated ownership of the invention - Disclose of the results- novelty - Inventor commitments.

7 Invention Disclosure Form It must be submitted to and approved by UPR. The UPR will review the Invention Disclosure making the required modifications. A number of inventors higher than 5 must be justify. Invention contribution of an inventor cannot be lower than 5%. The final version must be signed by all inventors.

8 Ways of technology protection In Material Science there are two main ways to protect a technology: Patent Trade secret Which is the appropriate one to protect my technology?

9 Patent PATENT - a set of exclusive rights for the exploitation of an invention - granted by a state to the owner of the patent - for a limited period of time (in general for up to 20 years) - in exchange for detailed public disclosure of an invention. Advantages o Patent allow the publication of the invention: relevant for a public research organization. Disadvantages o Patent maintaining costs are high if an international protection is required.

10 Procedimiento Obtaining international de tramitación patent de protection una patente Spanish Patent Filed ~3500 PCT application ~ 4000 Enter in National and Regional Phases (~ 20 k ) Granting Year months 30 months Priority year Maintaining costs K Patent promotion is essential Strategy for delaying costs and maximizing the Value of the Intellectual Property

11 Is my invention patentable? SPANISH PATENT LAW (EUROPEAN PATENT CONVENTION) An invention can be protected by patent when: - It is new; - involves an inventive step and - is susceptible of industrial application

12 Is my invention patentable? NOVELTY An invention is new if it is not known to the public before the date of filing of the patent application, The purpose of the novelty requirement is to prevent the prior art from being patented again. Beware of the inventor's own disclosure: - Doctoral thesis - Scientific paper and publications - Congresses - Any king of oral disclosure

13 Is my invention patentable? INVENTIVE STEP An invention involves inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. X 1 st Patent: protects the product for X=Cl, Br and its application as antitumor. Can a 2 nd patent protect X=F as antitumor? Can a 2 nd patent protect X=F as anxiolytic? Can a 2 nd patent protect X=Cl as anxiolytic? No Si Si

14 Is my invention patentable? PATENTABILITY TEST Before filing a patent application a patentability study must be carried out to determinate if the invention is new and involve inventive step Search in patent databases: China, USA, Japan, South Korea and Europe: Approx. 75% of patent applications

15 Is my invention patentable? PATENTABILITY TEST In CSIC: o Patentability tests are made by the Unit of Protection of Results o When it is necessary a second patentability tests is made by the IP agent Unit of Protection od Results: - PATENT OFFICES DATABASES- Free access - PRIVATE PATENT DATABASES

16 Patentability test Espacenet: PATENT OFFICES DATABASES - Full text of PCT and European patents - Title and abstract of more than 80 patent databases Invenes: - Spanish and Latin-American patents. PATENTSCOPE: millions of documents. USPTO: - Search in the complete text of USA patents. China Patent Office: Japan Patent Office: Korea Patent Office:

17 Patentability test Minesoft Patbase. Search in: PRIVATE PATENTS DATABASES - Patent databases of more than 100 countries - Full text and figure in more than 25 patent databases - Includes legal status of the patent Derwent Innovation index. Search in several patent database by author and technical object. Scifinder. Search of chemical patents

18 Who should write the patent? INVENTORS PATENT DRAFT State of the art: define start position and problem to be solved (few references) Description of the invention: Detailed description of the technical problem and the solution, advantages. Experimental proof: The description must be sufficient for someone skilled in the field to reproduce it. OTT / IP AGENT Correct and complete the inventors patent draft Claims: scope of protection

19 What can be protected by a Patent? A patent can protect: A product A process or method to obtain a product The use of that product Discoveries, scientific theories and mathematical methods are not considered inventions. The explanation of why a device works can not be protected by a patent.

20 Type of Patents PRODUCT PATENT It is a patent giving protection to a product as such: - Chemical compound - Mechanical device - Apparatus Product patents provide strong protection because: o Are difficult to bypass. o Patent infringement is easy to demonstrate

21 Type of Patents PROCESS PATENT It is a patent giving protection to a process or method: - Manufacturing process - Method to obtain a chemical product Process patents provide weak protection because: o It is possible to find an alternative way to obtain the product. o Patent infringement is difficult to demonstrate

22 Type of Patents USE PATENT It is a patent giving protection to a new use or application of a product: Use patents give an intermedia protection: o The protection is more limited that the product patent since it just protect an specific use. o Patent breach is easy to demonstrate since the product is found in the market with an specific application. Dependent patents: need to negotiate with the owner of the product

23 Trade secret TRADE SECRET The protection of an information by keeping it secret. o o o Trade secrets are protected without registration although in CSIC they are registered by notary Trade secret have to be new It is not necessary that trade secret involve inventive step. Coca-Cola formula developed by the pharmacist John Pemberton in 1886

24 Trade secret TRADE SECRET ADVANTAGES o o o Not being limited in time Involve no registration costs Does not require paperwork Trade secret appears to be particularly attractive when - Technology is difficult to be copied. - Patents provide weak protection: processes or methods - For SMEs: unlimited protection in terms of territory and time without any costs. CSIC protects processes or methods by trade secrets when they are going to be licensed to spin-off companies

25 Trade secret TRADE SECRETS DISADVANTAGES o o o A trade secret may be patented by someone else who developed the relevant information by legitimate mean. If the secret protects an innovative product, others may be able to inspect it, dissect it and analyze it and discover the secret. It does not allow the publication of the invention: relevant for a public research organization

26 How does CSIC protect its research results? In 2015 a total of 239 invention disclosures were submitted to TTO: 55 invention disclosures were rejected 184 invention disclosures were protected (77% of the total disclosures): 155 patents 5 Trade secret(recorded by notary) 5 software(recorded by notary) 5 Biological material(internal recorded) 14 Plant variety(internal recorded) 89% of CSIC technologies were protected by patent application

27 CSIC Patents evolution Priority Patents PCT Applications National and Regional Phases

28 Deputy Vice-presidency for Knowledge Transfer RTD Project Protection of the results Unit of Protection of R&D Results Unit of Commercialization Promotion de la technology Negotiation with the company Find a company interested Technology Transfer Agreement Exploitation of the technology Market

29 Promotion of technologies 29 29

30 Promotion of technologies o ENTERPRISE EUROPE NETWORK o CSIC webpage o Participation in technological international fair o Internal database with all company contacts

31 Promotion of technologies ENTERPRISE EUROPE NETWORK Three modules of activity: Information services about business cooperation and internationalization Services of technology and knowledge transfer Encouraging SME participation in the Seventh Framework Programme. 27 countries of the EU TOTAL: 40 countries y almost 500 institutions 13 countries non- EU Subsequent accessions: Japan, Korea, USA

32 Promotion of technologies ENTERPRISE EUROPE NETWORK Tool for the international disclosure of technologies: MERLIN most powerful technology offers and demands in the world Brokerage events Technology transfer events to match technology offer and demands

33 Promotion of technologies Participations in international technology fairs Europa, USA, Japan, Taiwan, Russia, India

34 Promotion of technologies Business Matching Award in nanotech 2015 (Tokyo) For CSIC contribution to innovation by means of technology Transfer.

35 Promotion of technologies Internal database with all detailed about contacted companies - Description of the company - Industrial sector - Company technology demands. - Contact details of the appropriate person ( ; telephone) 4022 companies

36 How are technologies transferred to industry? There are two ways: o Assignment of industrial property to a third party, which will become the new owner of the technology. o License: grant permission to others to use the invention in exchange of an economic reimbursement, according to terms of the license agreement. CSIC is still the owner of the technology

37 How are technologies transferred to industry? ASSIGMENT OR LICENSE? Problems with an assignment: o CSIC patents are Spanish public heritage. o CSIC lose the control over the technology: there is not a guarantee that the technology will reach the market. CSIC only license its technologies

38 License agreement ISSUES TO NEGOTIATE IN LICENSING AGREEMENTS o Territorial scope of the license o Industrial sector of application o Responsible of prosecution and maintenance of Patent Rights: patent fees o Responsibility on developing and commercialization: period of time to reach the market. o Economic conditions based on: o Royalties (% on net sales) o Payments for achieved milestones/ downpayments

39 Evolution of CSIC Licensed technologies Patent Trade secret Biological material Plant variety Software

40 CSIC Success Stories

41 CSIC Success Stories Adsorbent material for removal of toxic pollutant Magnetite nanoparticles integrated in adsorbent materials (as charcoal, silica, zeolites, clays, etc.): superparamagnetic adsorbents. - Removal of toxics pollutants - Removal of radioactive 134 Cs and 137 Cs isotopes released during nuclear accidents (Chernobyl 1986, Fukushima 2011): magnetite nanoparticles integrated in silica and silicates an Cs ion adsorbent.

42 CSIC Success Stories New ceramic material for biomedical applications Nanoceramics and nanocomposites as bactericide and fungicide materials for dental implants. A fast fabrication method to obtain yttria-stabilized zirconia of different colors for dental prosthesis. The patient will be able to get the dental prosthesis in 24-48h.

43 CSIC Success Stories The international reference method for the detection of gluten (adopted by Codex Alimentarius) It is based on R5 monoclonal antibody, which recognizes gluten peptides involved in celiac disease. European legislation provides "gluten-free" products to those with less than 20 ppm of gluten. R5 allows detecting quantities of gluten close to 5 ppm, so the limit of detection technique is more than enough to meet the European requirement.

44 What do CSIC s inventors get? SHARING ROYALTIES AND BENEFITS WITH THE INVENTORS The distribution of patent benefits in CSIC is regulated by the Spanish Law: 1/3 of all benefits goes to the inventors of the patent, in a proportional way to their contribution to the invention. 1/3 goes to CSIC central organization. 1/3 goes to the Research Institute in which: 22% to the research group. 11% for the Research Institutes as overhead.

45 TOP 25 GLOBAL INNOVATORS - GOVERMENT

46 Deputy Vice presidency for Knowledge Transfer CSIC Deputy Vice-presidency for Knowledge Transfer Serrano 142, Madrid(Spain)