European IPR Helpdesk Case Study HYDRO-COAT: Duly protecting research project results September 2012 Company details Name: Politecnico di Milano POLIMI Business sector: Mining Technology 1. Background HYDRO-COAT FP7 project started in October 2009 and ended in September 2011, with a view to developing knowledge for the production of a new range of environmentally friendly machines intended for the construction and mining sectors (e.g. drilling rigs, earth-moving machines, etc.). The consortium partners came together to find a solution to the problems that the use of oil-based hydraulic machines can cause. Fossil oil-based hydraulic fluids and lubricants are persistent and toxic. In addition, exhausted lubricants are carcinogenic. Moreover, the use of oil-based hydraulic machines poses severe fire and safety concerns in industrial environment (e.g. high temperature). 2. Activity With this in mind, the consortium developed an environmentally-friendly hydraulic system, using water instead of oil and tackling the related technological challenges of switching hydraulic fluids. New coatings and new hydraulic components will avoid rust and ensure a smooth, friction-free power transmission in the machines.
3. Results generated During project implementation three main results have been achieved. More precisely: One result consisted of new scientific knowledge related to the integration of DLC / CNC coating 1 aiming at enhancing wear resistance and the lubrication effect by the combination of two types of coating on sliding contacts; A second result concerns a water hydraulics circuit design intended as the new design of the hydraulic coating components. This is needed for the assemblage of the final machine; A final result achieved by the consortium concerns the industrial process itself. Namely, the effective coating industrial process for high-pressure water applications properly designed to comply with the production requirements of hydraulic components on an industrial scale. 4. IP strategy The first result is fully owned by one SME participant and will be permanently licensed to other three of them, which will therefore have permanent access to the technology, although without the right to sub-licensing. The reason why the result has been assigned to one single SME 2 is that the latter is the only one able to manufacture the new coatings, while the others are producers of the final machines or of their different components (e.g. pump parts, distributors, pistons, cylinders). Since the final machine assemblage will be carried out by the manufacturing SME participant, the latter has the ownership of the result related to the water hydraulics circuit design. As provided for the previous result, while the manufacturing SME will retain the exclusive ownership of the result, other SMEs will have permanent licences to the technology. Because the third result is of common interest for all the producing parties, it will be jointly owned by all SMEs. Concerning the licence regime, these are licences to use, meaning that SME partners will have the right to ask for the technology to be produced and to use it at manufacturing costs. As far as access rights are concerned, background owned by the RTD performers or by the SME partners needed for the project implementation has been granted royalty-free to all partners for the duration of the project. The same goes for access to foreground to perform the project owned by SME participants. What is interesting is that, for access rights to background and foreground for use 1 Diamond Like Carbon (DLC) and Cellular Nano Coating (CNC) are two coatings utilised in machines transmission. DLC applies to the piston and CNC to the cylinder. 2 In Research for the benefit of SMEs actions, the default regime is joint ownership. 2
purposes after the project end, the consortium agreed on differentiating between the use of foreground developed by SMEs and RTD performers in the scope of the project and outside its scope. In the first case, access rights are granted on fair and reasonable conditions to be agreed upon. Alternatively, when the use is outside the scope of the project, access rights are granted on market conditions. 5. Problem to solve The project shortcoming concerns the fact that none of the IP respectively owned by the SME participants has been protected yet, although they are evaluating the most suitable foreground protection. The importance of the project achievements and their inherent economic value would indeed suggest an immediate action to avoid the loss of the state of the art. 6. Possible actions to be undertaken Different tools are at disposal of the owning SMEs. First of all, patent is the most suitable tool for the devices and processes developed during the project. Where the choice not to protect is due to the lack of certitude on marketability of the final digging machine and consequent unwillingness to invest money for patent ownership, SME owners may choose two alternative routes: - On the one hand, they can apply for a patent and use the eighteenmonth lapse-time before the patent is published to test the machine. In so doing, they acquire the priority date on the foreground generated. After testing the practicability of the final result, they can always choose whether to pursue or withdraw the patent application, without incurring the maintenance costs. - Otherwise, they can decide on a utility model protection 3. In the latter case, the fees required for obtaining and maintaining the right are lower than those for patents 4. However, the most interesting outcome is that patent application can be transformed into utility models and vice versa 5, with the advantage of preserving the priority date of the initially filed application, which is deemed to be withdrawn. Whatever the case may be, before seeking any protection it is strongly advisable that results be covered by secrecy. A proper confidential business information management within the consortium and respective 3 In some countries this protection can only be obtained for certain fields of technology and only for products but not for processes. Therefore no manufacturing process or invention based on functional elements can be protected as a utility model. 4 Nevertheless utility model protection is offered by a small number of countries and only at national level. In EU 17 there are national registrars. For further information, visit http://www.wipo.int/sme/en/ip_business/utility_models/where.htm 5 Note that the requirements for acquiring a utility model are less stringent than for patents. Therefore for a utility model to be transformed into a patent, the technology concerned must meet all the patentability criteria. 3
SMEs is needed in order to internally protect the trade secrets acquired during project implementation and avoid their disclosure. 7. Lessons learned & Suggestions Even though the results created in the HYDRO-COAT project have a great commercial potential, the SMEs involved have not yet taken actions to protect them as intellectual property rights. Many other SMEs are in this same situation because they may lack awareness of the importance of IP or because they do not have the necessary financial resources or even time. Should this be your case, the European IPR Helpdesk can assist you by providing assistance. How to manage your trade secrets, which are the different routes to have your technology protected by IPR are examples of real questions that the European IPR Helpdesk IP consultants are happy to answer. Furthermore, if you are considering submitting a proposal for a FP7 call, do not hesitate to send it to the Helpdesk Helpline for an examination of the IP related parts. 4
GET IN TOUCH For comments, suggestions or further information, please contact European IPR Helpdesk c/o infeurope S.A. 62, rue Charles Martel L-2134, Luxembourg Email: service@iprhelpdesk.eu Phone: +352 25 22 33-333 Fax: +352 25 22 33 334 istockphoto.com/dave White ABOUT THE EUROPEAN IPR HELPDESK The European IPR Helpdesk aims at raising awareness of Intellectual Property (IP) and Intellectual Property Rights (IPR) by providing information, direct advice and training on IP and IPR matters to current and potential participants of EU funded projects. In addition, the European IPR Helpdesk provides IP support to EU SMEs negotiating or concluding transnational partnership agreements, especially through the Enterprise Europe Network. All services provided are free of charge. Helpline: The Helpline service answers your IP queries within three working days. Please contact us via registration on our website phone or fax. Website: On our website you can find extensive information and helpful documents on different aspects of IPR and IP management, especially with regard to specific IP questions in the context of EU funded programmes. Newsletter and Bulletin: Keep track of the latest news on IP and read expert articles and case studies by subscribing to our email newsletter and Bulletin. Training: We have designed a training catalogue consisting of nine different modules. If you are interested in planning a session with us, simply send us an email at training@iprhelpdesk.eu. DISCLAIMER This Case Study has been initially developed under a previous edition of the European IPR Helpdesk (2011-2014). At that time the European IPR Helpdesk operated under a service contract with the European Commission. From 2015 the European IPR Helpdesk operates as a project receiving funding from the European Union s Horizon 2020 research and innovation programme under Grant Agreement No 641474. It is managed by the European Commission s Executive Agency for Small and Medium-sized Enterprises (EASME), with policy guidance provided by the European Commission s Internal Market, Industry, Entrepreneurship and SMEs Directorate-General. Even though this Case Study has been developed with the financial support of the EU, the positions expressed are those of the authors and do not necessarily reflect the official opinion of EASME or the European Commission. Neither EASME nor the European Commission nor any person acting on behalf of the EASME or the European Commission is responsible for the use which might be made of this information. Although the European IPR Helpdesk endeavours to deliver a high level service, no guarantee can be given on the correctness or completeness of the content of this Case Study and neither the European Commission nor the European IPR Helpdesk consortium members are responsible or may be held accountable for any loss suffered as a result of reliance upon the content of this Case Study. Our complete disclaimer is available at. European Union (2012) 5