Invention process@tto polimi

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Invention process@tto polimi

  1. 1. Invention process @ Politecnico di Milano Massimo Barbieri massimo.barbieri@polimi.it
  2. 2. Professional background 2Work 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/ TTO © 2012
  3. 3. Introduction (1) 3Most 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 TTO © 2012
  4. 4. Introduction (2) 4 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.A. Piccaluga et al. – From 2004 to Move!’ University Patenting and Licensing in Italy; Differences and And Yet it Does 2006 about 50% of TTOs were establishedSimilarities in the Management of Technology Transfer Activities at European Level - (June 28, 2009).Available at SSRN http://dx.doi.org/10.2139/ssrn.1426885 TTO © 2012
  5. 5. Introduction (3) 5Ways of protecting intellectual works Patents Utility models Industrial designs Trademarks TTO © 2012
  6. 6. Introduction (4) 6What is a patent?A patent is a legal title granting the right to prevent third partiesfrom commercially exploiting an invention without authorization(negative monopoly right)What is an invention?It’s the novel solution of a technical problemPatentability requirements•Novelty•Inventive step•Industrial application TTO © 2012
  7. 7. Introduction (5) 7Utility modelsThis protection does not exist in all countries.Patents and utility models differ in the level of the inventive steprequired.A utility model consists of improvements in shape which don’tconstitute a solution of a technical problem but rather confers aparticular utility on a product, which already exists. TTO © 2012
  8. 8. Introduction (6) 8Ownership of rightsUnder the Italians 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 asowner, he should return to the University 50% of any revenue arisingfrom the exploitation of the invention.Politecnico di Milano has issued a Policy which establishes: a researcher may decide to transfer the ownership of the patentapplication to the University; If the University accepts to assume ownership of the patentapplication, the University will pay all costs connected to filing andprosecution and return the inventor 60% of any profits. TTO © 2012
  9. 9. Invention process @ Politecnico di Milano 9According to the procedure used by Politecnico the “Inventionprocess” is characterized mainly by four steps: compilation of the “Disclosure Form” (an internal document consisting an invention description) valuation of patentability requirements and the potentialcommercial value filing of the patent application identification of potential licensees negotiation of a licensing agreement TTO © 2012
  10. 10. TTO functional model: IP protection (1) 10 DF drafting First contact Meeting Inventor contacts TTO Novelty search yes noOne of the most important step in the “Invention Process” is the drafting of adocument (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 theUniversity.The detailed description of the invention allows the TTO staff to conduct aneffective novelty search. TTO © 2012
  11. 11. TTO functional model: IP protection (2) 11TTO’s staff shall evaluate the content of Disclosure Form.The criteria applied by TTO include: the technical feasibility of the invention the patentability requirements the assessment of a good probability that the invention can be transferred to industryIf the response is negative, the ownership (the patrimonial rights) will be given backto inventorsIf the response is positive, an Italian patent application will be filed TTO © 2012
  12. 12. TTO functional model: prior art search (1) 12 When are patent searches carried out? Filing Before Patent thesis IT PCT publication TTO Inquest 12 months 12 months 6 monthsState of the Patentability Patentability Patentability Monitoringart search search search search TTO © 2012
  13. 13. TTO functional model: prior art search (2) 13 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 © 2012
  14. 14. TTO functional model: prior art search (3) 14Searching for novelty can be difficult, because patent are legaldocuments and not necessarily written for ease of searching; they aredrafted to be defended in court.A patent search can be conducted in two ways: by words (intuitive but subjective) by classification• 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 TTO © 2012
  15. 15. TTO functional model: IP protection (3) 15 TTO Patent filing yes no Attorney Inventors 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, whichestablishes a priority date TTO © 2012
  16. 16. National filing 16 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 July 2008. 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 patentability opinion within 9 months from the filing date to allow the applicant to decide whether or not to proceed with EP or other foreign extensions.Source: G. Moradei – Patent information in Italy, “World Patent Information”, 31 (2009), p. 19 - 31 TTO © 2012
  17. 17. Patent strategy @ Polimi (1) 17After the national filing there is one year to decide whether or not to extend thepatent.During this year the TTO staff will proceed for finding companies potentiallyinterested 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 isextended or not at international level. TTO © 2012
  18. 18. Patent strategy @ Polimi (2) 18 DE PCT filing Publication EP 0 12 16 18 22 28 30 US Priority ISR + Written Demand IPRP IT Opinion (optional) AU National or regional phases 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 the technological 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 TTO © 2012

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