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Invention process @ Politecnico di MilanoMassimo Barbieri
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TTO 2012
Professional background 2
Work Experience, Education and Training
MSc in Chemistry
IP training (around the world)
IP teaching
10 years of experience at TTO
IP trends blogger
http://brevettiblog.blogspot.com/
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3Introduction (1)
Most Italian universities have started to set up specific TTOsfrom 2001, That year was introduced the professor privilege
legal status
From 2004 to 2006 about 50% of TTOs were established
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4Introduction (2)
From 2004 to 2006 about 50% of TTOs were establishedA. Piccaluga et al. And Yet it Does Move! University Patenting and Licensing in Italy; Differences andSimilarities in the Management of Technology Transfer Activities at European Level - (June 28, 2009).Available at SSRN http://dx.doi.org/10.2139/ssrn.1426885
Main Common Tasks of a TTO
IPRs management is the main activity of a TTO.
supporting the identification and protection of the research results;
finding companies interested in the patents and signing license contracts
with them
supporting the researcher in the process of starting and growing spin-off
companies
High quality TTO should be able to:
Develop a quickly patent process when an invention has been identified;
From a pool of inventions, do a selection of those that have a concrete
possibilities of exploitation by one or more licensees.
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5Introduction (3)
Ways of protecting intellectual works
Patents
Utility models
Industrial designs
Trademarks
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6Introduction (4)
What is a patent?
A patent is a legal title granting the right to prevent third parties
from commercially exploiting an invention without authorization(negative monopoly right)
What is an invention?
Its the novel solution of a technical problem
Patentability requirements
Novelty
Inventive step
Industrial application
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7Introduction (5)
Utility models
This protection does not exist in all countries.
Patents and utility models differ in the level of the inventive step
required.
A utility model consists of improvements in shape which dont
constitute a solution of a technical problem but rather confers a
particular utility on a product, which already exists.
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8Introduction (6)
Ownership of rights
Under the Italian's Industrial Property legislation, the inventor-
researcher is THE sole owner of rights, stemming from the patentedinvention of which he is the inventor (art. 65).
If a university researcher decides to file a patent application as
owner, he should return to the University 50% of any revenue arising
from the exploitation of the invention.Politecnico di Milano has issued a Policy which establishes:
a researcher may decide to transfer the ownership of the patent
application to the University;
If the University accepts to assume ownership of the patentapplication, the University will pay all costs connected to filing and
prosecution and return the inventor 60% of any profits.
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9Invention process @ Politecnico di Milano
According to the procedure used by Politecnico the Invention
process is characterized mainly by four steps:
compilation of the Disclosure Form (an internal document consisting an invention description)
valuation of patentability requirements and the potential
commercial value
filing of the patent application
identification of potential licensees
negotiation of a licensing agreement
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10TTO functional model: IP protection (1)
First contact Meeting
DF drafting
Novelty search
Inventor contacts TTO
yes no
One of the most important step in the Invention Process is the drafting of a
document (Disclosure Form), which has essentially a dual purpose:
it contains a detailed description of the invention;
it constitutes a declaration of the inventors to transfer the ownership at the
University.
The detailed description of the invention allows the TTO staff to conduct an
effective novelty search.
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TTOs staff shall evaluate the content of Disclosure Form.
The criteria applied by TTO include:
the technical feasibility of the inventionthe patentability requirements
the assessment of a good probability that the invention can be transferred to
industry
TTO functional model: IP protection (2)
If the response is negative, the ownership (the patrimonial rights) will be given back
to inventors
If the response is positive, an Italian patent application will be filed
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PCT
6 months
Patent
publication
12 months
Before
thesis ITTTO
Inquest
State of the
art search
Patentability
search
Patentability
search
Monitoring
Filing
Patentability
search
12 months
When are patent searches carried out?
TTO functional model: prior art search (1)
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The inventors should fill in the DF with (and
without exceptions):
type of invention to protect
detailed description of the invention
advantages compared to state of the art
a list of keywords
TTO functional model: prior art search (2)
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understand the invention: find out essential features
keywords: identify a group of words (and synonyms)
classification: select one or more classification codes corresponding to theinvention
databases
Searching for novelty can be difficult, because patent are legal
documents and not necessarily written for ease of searching; they are
drafted to be defended in court.
A patent search can be conducted in two ways:
by words (intuitive but subjective)
by classification
TTO functional model: prior art search (3)
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15TTO functional model: IP protection (3)
TTO
yes noPatent filing Attorney
TTO staff will select a patent attorney who will be responsible for drafting thepatent application
the TTO staff will send to patent attorney a detailed description of the invention
the priority application will be filed in Italy (Italian mandatory law)
Typically TTO implements a strategy based on a national first filing, which
establishes a priority date
Inventors
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An application may be filed at one of the 103 Chambers of Commerce, directly at
the UIBM. An e-filing procedure is also available.
Under the current rules an application is kept under secrecy for military purposes
for a maximum of 90 days, after which it could be disclosed to the public if
advanced accessibility has been requested by the applicant, otherwise it is
available after 18 months, as usual.
The EPO carries out a search report for Italian patent applications filed from 1st July2008.
The application is sent to the EPO together with a translation of the claims in
English (provided by the applicant himself or made by the EPO at an official fee of
200, within 4 months from the filing date.
The EPO will send the UIBM a search report with a preliminary patentabilityopinion within 9 months from the filing date to allow the applicant to decide
whether or not to proceed with EP or other foreign extensions.
National filing
Source: G. Moradei Patent information in Italy, World Patent Information, 31 (2009), p. 19 - 31
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After the national filing there is one year to decide whether or not to extend the
patent.
During this year the TTO staff will proceed for finding companies potentially
interested to the patent. This phase requires works closely with the inventor.
Within one year from filing date, it is necessary to decide whether the patent is
extended or not at international level.
Patent strategy @ Polimi (1)
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18Patent strategy @ Polimi (2)
Demand
(optional)
IPRP
National orregional phases
Priority
IT
0 12 16 18 22 28 30
PCT filing
ISR + Written
Opinion
Publication
DEDE
EP
US
AU
PCT is basically an option for future patenting, that provides the applicant with a
further delay before deciding to apply or not.
The PCT process provides the advantage of a longer investigation of thetechnological potential of the invention, and in case of a negative assessment, the
application can be withdrawn before entering into expensive national or regional
phases.
Source: D. Guellec et al Applications, grants and the value of patent, Economics Letters, 69 (2000), p. 109 -
114