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Telmo Vilela

Member of the Board

Lisboa| 27th February 2012

Bayh-Dole Act

The Portuguese Reality: Challenges

and Opportunities

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IP protection, management and valorization at

Portuguese Universities

- Before the year 2000: the “age of outlaw”;

- The New Millennium: first steps (first falls?);

- IP Regulations and IP Code (work in progress);

- The Pitfalls;

- Balance: Are we doing it the right way or should we go “rad n´bad”?

- Debate (and debate again…)

Agenda

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Before 2000: The “Age of Outlaw”

absence of internal policies and guidelines regarding ownership, management and valorization of IPR´s developed at universities

(general rule);

no “central management” of IPR´s and no staff committed and

prepared to deal with the protection, management, and valorization

of University inventions;

no disclosure forms or any kind of information was provided to the University regarding possible IPR´s arising from R&D results;

Faculty Staff filed for the IP Rights, on their own name;

General Picture:

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Before 2000: The “Age of Outlaw”

Questions:

Was it allowable under the legal framework?

Was there (is there) any Bayh-Dole Act alike?

Was (is) there any specific legal provision addressing ownership of

university inventions?

Was (is) there any legal provision on the law that applies to the

determination of university inventions ownership?

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Before 2000: The “Age of Outlaw”

At the end:

Faculty Staff who filed for patent applications in their own name were breaking the law

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The New Millenium: first steps (first falls?)

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- Industrial Property Code

Article 58

GENERAL RULE ON THE RIGHT TO PATENT

1 – The right to patent shall belong to the inventor or his

successors in title.

2 – If two or more persons have made an invention, any of

them may apply for a patent on behalf of all.

IP Regulations and IP Code (work in progress)

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- Industrial Property Code

Article 59

SPECIAL RULES ON ENTITLEMENT TO A PATENT

1 – If an invention was made during the performance of

an employment contract in which inventive activity is

provided for, the right to the patent belongs to the

company.

2 – In the case referred to in the previous paragraph, if the

inventive activity is not especially remunerated, the inventor

is entitled to remuneration in keeping with the importance of the invention.

IP Regulations and IP Code (work in progress)

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IP Regulations and IP Code (work in progress)

.: University retains IP Ownership

.: Scope: all inventions developed by internal staff or other w/ Un. Resources

.: Respect for Inventor moral rights (right to be named)

.: Right to publish (acc. to Patent Strategy)

.: Duty of disclosure for all staff Inventors

.: (Net) Profit sharing scheme with Inventors

.: University leads all exploitation efforts

.: Inventor isn't charged with any costs

.: Exceptions: R&D contracts w/ companies, joint ownership

.: Win-win solution for Staff and University

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Pitfalls

- not having a solid IP Policy (like the Sinatra song: there

may be trouble ahead!)

- not having a good patent portfolio management strategy!

(patents can make you rich or bankrupted);

- not being able to have the faculty staff committed (being

evolved is not enough: you better have pigs, and not

chickens!)

- not being able to complete the metamorphosis phase:

(shouldn’t the bug be a beautiful butterfly by now??)

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• Should IP belong to faculty staff?

• Should faculty staff be entitled to choose the TTO he/she thinks is more capable of doing the work? Therefore, should we open competition between TTO´s?

Nonsense??

Kauffman Foundation Experts' Solution for University

Technology Licensing Reform Named to List of 'Ten

Breakthrough Ideas for 2010' by Harvard Business Review

“Authors say a free agency for inventors will get innovations to the market

faster and create jobs, benefit consumers, researchers and universities”

Right way or go rad´ n bad?

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• Is it reasonable to have 15/20 TTO´s in a country like Portugal?

Shouldn’t we create centralized and specialized TTO´s (per field),

which would aloud to allocate more resources to these TTO´s?

• Shouldn’t UTEN evolve to a liaison office helping PT university patents and spin-off´s “cross the ocean” to US? Multiple team with

staff from US and PT actually working to close deals in the US?

• Isn’t it all a question of (poor marketing)?

• Shouldn’t faculty staff be discharged of exclusivity obligations and

be somehow motivated to adopt an entrepreneurial attitude?

• What could be done to change our culture of “once you fail you will

always be a loser”?

•Disclaimer: this does not reflect my personal opinions!!!

Right way or go rad´ n bad?

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IP Management and TT: at the end it´s all quite

simple right??

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Contacts INPI

Blue Line: 808 200 689

Fax: 21 886 98 59

e-mail: atm@inpi.pt

Site: www.inpi.pt

Adress: Campo das Cebolas, 1149-035 | LISBOA

Telmo Vilela

Member of the Board

Telef: + 351 21 881 8100

e-mail: telmo.vilela@inpi.pt