Process Protection Lieu Final
- 1. FITT (Fostering Interregional Exchange in ICT Technology Transfer)
- 2. Process “Protection” in general Each University or Research Centre is confronted with a choice when considering the research results and its valorisation: do we have to publish, keep the secret or protect it with a patent, a drawing or a model, a mark, a copyright? In a fast moving sector as ICT, it is not always easy to define the best protection strategy: patenting is a strong protection mean, but is costs and time consuming. Besides secrecy, many other types of protection (mark, copyright…) are also existing and offer a wide range of possibilities. Awareness creation of the researchers about protection is also a key issue (non disclosure)
- 3. Process “Protection” in general In the activity of IP Management, besides the processes of Valuation and Exploitation, the process of Protection of the IP is an essential stake. (see activity “IP Management” for more details about this triangulation) VALUATION EXPLOITATION PROTECTION Business Legal Technology IP Management
- 4. Process “Protection” in practice What is IP?, and means of protection: Intellectual property (IP) refers to creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce. Intellectual property is divided into two categories: Industrial property, which includes inventions (patents), trademarks, industrial designs, and geographic indications of source; and Copyright, which includes literary and artistic works such as novels, poems and plays, films, musical works, artistic works such as drawings, paintings, photographs and sculptures, and architectural designs. Rights related to copyright include those of performing artists in their performances, producers of phonograms in their recordings, and those of broadcasters in their radio and television programs. Source: World Intellectual Property Organization (www.wipo.int)
- 5. Process “Protection” in practice Why protect an invention? Preserve the rights of the inventors Prevent the competitors to exploit the invention without precondition Increase the economic development via the technology transfer to companies Support the partnerships with companies Possible action leverage for obtaining research contracts Possible financial return Allow the creation of spin-off.
- 6. Process “Protection” in practice Protection of the IP is not only a matter of TTO. Protection is an essential stake and must form an integral part of the researcher steps. It concern both applied or fundamental research. And awareness of researcher is an important issue. (For more information about awareness creation of researchers, see process “creation of transfer awareness” of the FITT toolbox) Protection is to be taken into account throughout the value chain, from the very early development stage, inside the labs, to the commercialisation. R&D Technological scouting Invention Disclosure Patenting and portfolio management Commercial exploitation Call for projects Project mounting Start and project management IP in the university
- 7. Parts of the process The object is not here to cover and expose the whole range of practices commonly in use in the field of IP Protection. See chapter “further readings” to find more detailed information. A focus on ICT particular issues in the FITT project propose the following practices: Charter for IP and technology transfer Partnership Management – Agreement guidelines Laboratory Notebook Invention Disclosure Particular case of Software Patent
- 8. Practice “Charter for IP and TT” Charter adopted in 2008 by the Carnot Institutes Carnot Institutes : French label and network of 33 research laboratories/organizations active in partnership research (i.e. research lead by public laboratories in partnership with companies) Harmonised set of principles for Intellectual Property and Knowledge Transfer, bringing a global and clear framework for cooperation between private stakeholders and public research organizations (PRO). Close links with a similar initiative at EU level
- 9. Practice “Partnership management - agreement guidelines” The IPR guidelines for drafting an agreement must apply the organization’s IP policy and address: Specific conditions for patents and software Improvements of the background IP Disclosure of research results: publications Recommended solutions for four main cases in negotiations with industrial partners (INRIA practice): Source: “INRIA’s intellectual property policy: application to contractual matters”, M. Fitzgibbon, Transfer and Innovation Department, INRIA *PRO: Public research organization
- 10. Practice “Laboratory notebook” The laboratory notebook is an essential working tool for the researcher. It is used for documenting and dating any experiments, work, research results and original ideas. In general, it is an important source for: understanding how the experiments were conducted understanding how the conclusions were formed understanding how the results were deduced The laboratory notebook establishes the precedence of results or inventions from an intellectual property standpoint. It therefore constitutes evidence in the event of disputes relating to scientific publications or patent applications in the United States. It was adopted simultaneously by all the French speaking universities in Belgium. It represents now a standard to be respected by all researchers.
- 11. Practice “Invention Disclosure” An invention disclosure form asking for: Classical informations as inventor name, invention description, invention applications, invention advantages Four situations justifying a patent filing Start-up creation Building up a set of assets in an application domain Standardisation operation An identified opportunity of licensing With a focus on the transfer strategy to put in place
- 12. Practice “Software Patenting” Computer programs as such are still expressly excluded from patent protection In practice, however, the approach has changed in recent years. This practice will give A reminder of the necessary definitions A status on the european law Examples of “software patent” filed an delivered in Europe
- 13. Suggested Readings Link to code book: intellectual property, intellectual property protection, intellectual property rights, patent, software patent, copyright, invention, inventor, invention disclosure, non disclosure, research result, background, exploitation, valuation, spin off, start-up, standardisation, licensing. Link to relevant websites: http://www.epo.org http://www.uspto.gov http://www.wipo.int