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