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www.FITT-for-Innovation.eu
Protection
FITT
(Fostering Interregional Exchange in ICT Technology Transfer)
2 | February 2010 Protection
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 | February 2010 Protection
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)VALUATIONVALUATION EXPLOITATIOEXPLOITATIO
NN
PROTECTIONPROTECTION
Business
LegalTechnology
IP Management
4 | February 2010 Protection
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 | February 2010 Protection
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 | February 2010 Protection
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&DTechnologica
l scoutingInvention
Disclosure
Patenting and portfolio managemen
t
Commercial exploitation
Call for projects
Project mounting
Start and project
management
IP in the university
7 | February 2010 Protection
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 | February 2010 Protection
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 | February 2010 Protection
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 | February 2010 Protection
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 | February 2010 Protection
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 | February 2010 Protection
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 | February 2010 Protection
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