academic invention disclosure process

Academic invention disclosure processMassimo Barbieri

[email protected]

Massimo Barbieri © 2014

Professional background 2

Work Experience, Education and Training

degree in Chemistry IP training IP teaching 10 years of experience at TTO

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Topics 3

Main points

• Forms of IPR

• “Invention” process @ PoliMi

• Prior art searches

• Patent strategies


4Introduction (1)Intellectual vs industrial property

Ways of protecting intellectual works

Patents

Utility models

Industrial designs

Trademarks


5Introduction (2)Invention, patentability requirements

What is an invention?

It’s the novel and inventive solution of a technical problem

Non patentable inventions (considered as such) are:• Discoveries, scientific theories and mathematical methods;• Aesthetic creations;• Games, methods for doing business, program for computers;• Presentations of information.

Patentability requirementsNoveltyInventive stepIndustrial application


6Introduction (3)Patents

What is a patent?

• A patent is a legal title giving the right to exclude third parties from commercially exploiting an invention without authorization (negative monopoly right) – but patents don’t give the right to practice the invention

• Compositions of matters, methods, apparatus, etc…• Territorial and limited in time (up to 20 y)• Claims determine what subject matter is protected• Parts of the specification not appearing as claimed elements can’t be

enforced• Is it easy to get a patent? No, it takes time and money to argue

against patent examiners’ rejections, especially to obtain broad and commercially useful claims.


7Introduction (4)First page of a patent

Publication number

Classification codes

Title

Priority date and number


8Introduction (5)Patent specification

• Technical field• Background art• Summary of the invention • Brief description of drawings• Ways of carrying out the invention• Examples• Drawings• Claims


9Introduction (6)Example of patent’s claims

1. A method for the deposition of steel on at least one surface portion of a nitrided metallic element characterized in that it comprises a phase a) releasing nitrogen from at least one surface portion of said nitrided metallic element and a phase b) depositing at least one layer of molten metal on at least one surface portion of said nitrided metallic element.

2. The method according to claim 1, characterized in that said method comprises repeating said phase a) various times in order to reduce or in any case greatly limit the presence of nitrogen inside said at least one surface portion of said nitrided metallic element.

3. The method according to claim 1 or 2, characterized in that said phase a) comprises a phase c) melting said at least one surface portion of said metallic element by means of a heat source .

4. The method according to claim 3, characterized in that said heat source is a laser source susceptible to melting said at least one surface portion of said nitrided metallic element.

5. The method according to any of the claims from 1 to 4, characterized in that it comprises a phase d) processing said at least one steel layer deposited with tool machines.

Patent application n. WO2006106429, entitled «Method for the deposition of steel on nitrides metallic elements”


10Introduction (7)Utility models

Utility models

This protection does not exist in all countries (59, source: WIPO).“Currently, a small but significant number of countries and regions provide utility model protection. These include: Albania, Angola, Argentina, ARIPO, Armenia, Aruba, Australia, Austria, Azerbaijan, Belarus, Belize, Brazil, Bolivia, Bulgaria, Chile, China (including Hong Kong and Macau), Colombia, Costa Rica, Czech Republic, Denmark, Ecuador, Egypt, Estonia, Ethiopia, Finland, France, Georgia, Germany, Greece, Guatemala, Honduras, Hungary, Indonesia, Ireland, Italy, Japan, Kazakhstan, Kuwait, Kyrgyzstan, Laos, Malaysia, Mexico, OAPI, Peru, Philippines, Poland, Portugal, Republic of Korea, Republic of Moldova, Russian Federation, Slovakia, Spain, Taiwan, Tajikistan, Trinidad & Tobago, Turkey, Ukraine, Uruguay and Uzbekistan”.

Patents and utility models differ in the level of the inventive step required.

A utility model consists of improvements in shape which don’t constitute a solution of a technical problem but rather confers a particular utility on a product, which already exists.


11Introduction (8)Example of utility model

Utility model n. CN202908437, entitled «Knife or fork or spoon in detachable structure»


12Introduction (9)Industrial design

Industrial designs

Design patents cover the aesthetic features of an object that has a practical utility (e.g. a new shape of a coffee machine).

Drawings: constitute the claims

Registered community design n. 002027425 entitled «Convertible garments»


13Introduction (10)Software

Software

Computer programs as such are not patentable.A further technical effect is required, when a program is running (i.e. a faster communication between two mobile phones).

T 26/86: a computer program used to control a X-ray device is patentable.

• Software is difficult to examine («black box»)• Many commercial products don’t document their internal

structures, algorithms• Patent prior art is difficult to retrieve


14Introduction (11)Ownership, inventorship

Ownership of rights

Under the Italian's Industrial Property legislation, the inventor-researcher is the sole owner of rights, stemming from the patented invention 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 patent application, the University will pay all costs connected to filing and prosecution and return the inventor 60% of any profits.


15Invention process @ Politecnico di Milano

According to the procedure used by Politecnico the “Invention process” is characterized mainly by the following steps:

compiling of “Disclosure Form”

valuation of patentability requirements and the potential

commercial value

filing of the patent application

identification of potential licensees

negotiation of a licensing agreement


16TTO functional model: IP protection (1)



One of the most important step in the “Invention Process” is the drafting of a document (Invention 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.


18Disclosure Form


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TTO’s staff shall evaluate the content of Disclosure Form.

The criteria applied by TTO include: the technical feasibility of the invention the patentability requirementsthe assessment of a good probability that the invention can be

transferred to industry

TTO functional model: IP protection (3)

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



TTO staff will select a patent attorney who will be responsible for drafting the patent 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


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PCTIT

6 months

Patent publication

12 months

Before thesis

TTO request

State of the art search

Patentability search


Monitoring

Filing


12 months

When are patent searches carried out?

TTO functional model: prior art search (1)


22

Type of invention to

protect

Detailed description

of the invention

Advantages compared to state of

the art

A list of keywords



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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

• citations

• 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



24TTO functional model: prior art search (4)

1. http://ep.espacenet.com/

2. https://register.epo.org/regviewer

3. http://www.wipo.int/pctdb/en/

4. http://patft.uspto.gov/

5. http://portal.uspto.gov/pair/PublicPair

6. http://www.freepatentsonline.com/search.html

List of free patent databases


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Example of «orthogonal search»: a mobile phone which includes a breath analyzer

H04M (Telephonic communication) and G01N33 (Gas analyzer) 26 results in Espacenet



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Example of searching nanotechnology patents: DNA computers

1. “DNA computer” (kw in Ti/Abs): 783 results (too many!)

2. Filter previous results using B82Y subclass in the CPC search field: 19 results

3. Most of them are classified in the B82Y10/00 subgroup (“Nanotechnology for information processing…”

4. Refine the previous query using B82Y10/00 subgroup: 13 results

5. Read the documents’ abstract and verify if there is a more precise classification symbol



27TTO functional model: prior art search (7)

G06N3/123

5. Using the classification symbol G06N3/123 without any keywords, you’ll get 303 hits (which are potentially all relevant, because they relate to DNA computers or computing)


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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

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.

National filing


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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)


30Patent strategy @ PoliMi (2)

Demand(optional)

IPRP

National or regional phases

PriorityIT

0 12 16 18 22 28 30

PCT filing

ISR + WrittenOpinion

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 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.


31Conclusions

• Pinpoint the best IP form to protect a technical teaching;

• Patents, utility models and industrial designs as a starting point (i.e.

for licensing, start-up creation);

• Prior art search before filing a patent application, in order to avoid

lack of novelty/inventive step and examiners’ rejections and to

better write a patent application;

• The prior art search is also useful for finding a potential licensee;

• Define a marketing and licensing strategy, in order to better

exploit academic innovations.


32References

• G. Moradei – Patent Information in Italy, World Patent Information, 31 (2009), p. 19 - 31

• D. Guellec et al. – Applications, grants and the value of patent, Economic letters, 69 (2000), p. 109 – 114

• A. Martin, J. P. Wappel – Patents: Should you panic?, Livedesign, February 2006, p. 50 – 58

• Nanotechnology and patents – EPO publication• Climate change mitigation technologies – EPO publication