José Silva Lopes,PhD

Science & Education Manager at MIT Portugal BioEngineering Systems

(former)TTO at FCT Nova

The path…• PhD in Chemical Engineering (Supercritical Fluid Technology).

Output : a Thesis and a patent(co-inventor) and lots of working hours(good for experience)!

• During PhD…Industrial Engineering BSc.(good for industrial systems awareness)

• After PhD…Education, R & D with Technology Transfer (another patent!),RTN Officer

• More recently, MIT Portugal Bio-Engineering Systems : Education and Science Manager, Innovation Systems and Technological Inovation, TTO at FCTUNL(until 2013)

R & D Outputs

Technology & Science in the Lab

InnovationCommercial and/or

Societal Value Scientific Production Career Development

Scientific Production• Publications• Conferences;Workshops• Degrees(PhD,Tenure)• Projects(National,European,With Industry)• Collaborations and Cooperations

Career Development• CV• Jobs• New ideas, new collaborations, new

scientific projects• Interaction with Industry• Networking

Technology value from innovation

• Patents and Publications• Knowledge Transfer • Sponsored Research Agreements• Licensing/Assignment of Technology• Start-ups/ Spin-Offs• Philantropic Focus, Societal and

Community Improvement

And it starts with an invention…

What is an invention?

A technical teaching which defines a relation between technical features and technical effect

Has to be reproducible

And it starts with an invention…• A new and useful process• A machine • An article of manufacture• A composition of matter• Any improvement related with the above

So…what we do with it? Is it intriguing, it has potential?

Invention

Conception (in the lab orother technology environment)

Reduction to Pratice-constructive(patent application)

-actual(working model, proof of concept,prototype)

Moving from Invention…

University Technology Transfer Office

Should I file an Invention Disclosure??? Or should I publish?

Should I consider Intellectual Property protection??

Contact the TTO!

Intellectual Property Rights

• Intellectual property : inventions and/or materials that may be protected under the patent, trademark and/or copyright laws.

• It is not exclusive of publication!• It is important to get the right value from your

invention• Can protect your rights as an inventor and the

university as your host• Eventually may lead you to start your own

business!

Intellectual Property, Universities, Knowledge Transfer & Society

.: Return to the national economy;GDP

.: Return to the government;Taxes

.: Return to the people;Jobs

.: Return to the markets;

.: New beneficial products, processes and services.

- Safeguarding public assets- Securing public gains- Ethical research endeavors towards social benefits

IP allows for…

Main areas of the TTO

TTO

Intellectual Property

EntrepreneurshipTechnology Transfer

New results arising from University Research activities may and must be protected!!!!!

Industrial Property.: Invention.: Design.: Trademarks

Copyright.: Literary and Artistic Works;.: Software, etc...

Intellectual Property

From University Research to Innovation…

Innovation and University Inventions

Knowledge Transfer & Universities

Ways to protect knowledge

.: Secrecy

.: Complementary assets

.: IP

Ways to transfer Knowledge

.: Assignment

.: Licensing

.: Spin-off/Start-up

.: Publication (of papers AND

patents)

Moving from Invention

Technology Transfer At MIT

Moving from Invention to License- Usual Steps

1-Discussion: Inventor informally discusses the invention with the TTO

2-Disclosure: Inventor reports the invention to the TTO using the standard disclosure form

3-Assessment and Evaluation: The TTO assesses the invention for patentability and commercial potential

4-Filing and commercialization decision : Back to the lab, no patent filling, patent filling with marketing strategy, trade secret with a industrial partner, licensing, assigment, waive title

Moving from Invention to License- Usual Steps

5-Marketing: The TTO will contact potential licensees or assignees

6-Licensing: The TTO will negotiate and manage licenses to companies, or assignments

7-Commercialization and Revenue(shared between inventors and University)

In all steps, inventor(s) input and cooperation is crucial!

Overview of intellectual propertyLegal right What for? How?

Copyright Original creative or artistic forms

Trade marks Distinctive identification of products or services

Use and/orregistration

Registered designs Registration

Patents New inventions Application and examination

Exists automatically

Trade secrets

External appearance

Valuable information not known to the public

Reasonable efforts to keep secret

Registered industrial property

Patents

Duration: 20 until years

Trademarks

Duration: until 10 yearsor life

Utilitymodels

Duration: until 10 years

Designs

Duration: until 5 x 5

years

IP rights with a certificate

Examples of unregistered IP

Unregistered IP = Copyright

The right will be in force until 70 years after the death of the creator

Literature

Pieces of music

Paintings

Drawings

Films

BottleRegistered design

Cap Patented

Coca ColaRegistered trade mark ®

Label textCopyright ©

The Coca Cola CompanyTrade name

Combined use of IP rights

Trade marks:• Made by "Nokia"• Product "N95"• Software "Symbian", "Java"

Patents:• Data-processing methods• Semiconductor circuits• Chemical compounds• …

Copyrights:• Software code• Instruction manual• Ringtone• …

Trade secrets: ?

Designs (some of them registered):• Form of overall phone• Arrangement of buttons in oval shape• Three-dimensional wave form of buttons• …

© Nokia

Combined use of IP rights

What is a Patent?

You can say it is:

• An agreement between the

inventor and society

Alternative definition (legal):

• A patent is an exclusive right to commercially exploit the invention in this country. Protection up to 20 years

-It gives the owner or the licensee the right to exclude others from making, using or selling the patented invention for a specific period that begins with the issuance of the patent

-Protects investment in innovation(Return On Investment)

-Copyright information(Patent Number) for competitors awareness

Legal Terms and Agreements – IP Rights(Patents)

Who owns the patent rights?

-The inventors(depending on the employment status) and the University if developed within his facilities; it could be eventually reassigned to the inventor if the institution doesn’t want to pursue patent protection and/or actively market the invention

-A policy is always in place in the institution regulations(Patent Rights Agreement within the internal policy)

Legal Terms and Agreements – IP Rights(Patents)

What is-and is not-patentable?-Must be Novel/New (non public disclosure in any

form before filling);-Must be Useful ( must have industrial or

agriculture application potential);-Must be Inventive (“nonobvious to someone of

ordinary skill in the art”)

Industrial Application

.: The invention must have at least one practical

purpose and must be reproducible

.: There is no evaluation of quality or economic

factors!

.: Only the technical qualities are relevant

Novelty

.: Novelty: An objective, global demand

.: New in relation to that which is known

prior to the date of filing the application

.: Known = general availability through the

written word, spoken word (lectures,

etc.), usage, etc.

The Inventive Step

To differ essentially =

Inventive step =

Not obvious to a person skilled in the art...

“As a general rule, there is an inventive step if the prior art leads theperson skilled in the art away from the procedure proposed by theinvention. This applies in particular when the skilled person would noteven consider carrying out experiments to determine whether thesewere alternatives to the known way of overcoming a real or imaginedtechnical obstacle” EPO Handbook

The Inventive Step

Problem-and-solution approach* Three main stages:(i) determining the "closest prior art",(ii) establishing the "objective technical problem" to be solved, (iii) considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person.

Always try to define the objective technical problem and how it was solved!Unexpected bonus effect!

E.g.:-It is not inventive to compose previous art in a obvious manner(mere aggregation of features)-Not inventive ” Filling the gap” or “analoguous substitution”

What can be patented?

.: A product

.: The apparatus for producing the product

.: The process for producing the product

.: The use of the product

What cannot be patented?

.: Computer programmes

.: Medical and surgical treatments

.: Mathematical methods

.: Business methods

.: Discoveries

.: Aesthetic creations

.: New species of plant or animal

.: Inventions which are contrary to moral standards and public order (e.g. instruments of torture)

.: The human body and any non-separate part/s thereof

Legal Terms and Agreements – IP Rights(Patents)

The Patent Application

WIPO

Patent Document

• Description– common part– specific part

• Claims• Abstract• Figures• Title

Claims are what can be protected by law

1. Title

2. Description – common part

– what the patent concerns

– prior art, the disadvantages

– the purpose and advantages of the invention

– how and by which means the advantages are achieved must correspond with the patent claims

– mode of operation, by means of which describes how the inventive effect is achieved

The Patent’s Composition(It’s not a Paper!!!!!!!)

DrawingsDrawings

TitleTitle

DescriptionDescription

The Patent’s Composition…that must be well written with the help of an patent attorney or agent

3. Description specific part, and any figures

- detailed technical description with specific explanation of embodiment with reference to any figures

4. Claims

- independent claim/s

- apparatus

- method

- product

- dependent claim/s

5. Abstract

Patent ExampleDISCLOSURE OF INVENTION

(…) To accomplish the above-indicated objects, according to the first aspect of the invention, there is provided a screen comprising a structure in which particles having a size not larger than 1 [mu]m are regularly aligned.According to the second aspect of the invention, there is provided a screen configured to reflect light of specific wavelengths by using a photonic crystal.The photonic crystal is an artificial crystal made by regularly aligning transparent mediums (for example, two different kinds of transparent mediums) largely different in refractive index (dielectric constant) to cycles near the wavelength of light, e.g. to cycles of hundreds to one thousand and hundreds of nanometer(…)

Patent Example

CLAIMS

We claim:

1. A screen comprising a structure in which particles having a size not larger than 1 [mu]m are regularly aligned, a substrate, a red-reflecting particle layer, a green-reflecting particle layer and a blue-reflecting particle layer formed on said substrate via a buffer layer, said red-, green- and blue-reflecting particle layers being arrayed in the lateral direction on said substrate.2. The screen according to claim 1 wherein the array exhibits stacking cycles not less than eight cycles and not more than fifteen cycles.3. The screen according to claim 1 wherein said red-reflecting particle layer, said green-reflecting particle layer and said blue-reflecting particle layer are stripe-shaped, rectangular-shaped or square-shaped, and said particle layers are arrayed in a predetermined alignment pattern on said substrate.4. The screen according to claim 1 wherein said buffer layer is a layer of particles having a diameter not larger than 208*(1.36/n) nm(…)

…

Patent Application Timeline

National Application

Patent Application Costs

-Patent Writing (Patent Attorney or Patent Agent)

-Patent Claims(more than 15)

-Patent Filling and Search Fees

-Patent Opposition Fees

-Patent National Phases

-Patent Renewal Fees

In total, cost estimation from 7500 to 20000 € during filling time and about as much during the patent lifetime(PCT and/or EP)

Patents databases

“Intelligent information” to evaluate:

.: Technology

.: Competition

.: Litigation

.: www.inpi.pt | Portuguese Patent Office

.: www.epo.org | European Patent Office

.: www.wipo.org | World Intellectual Property Office

.: www.uspto.gov | US Patent and Trademark Office

.: www.espacenet.com | Europe’s network of patent databases

Break…For Questions

Patent and Business

Is my invention new?

Who are my competitors,or potential partners and what do they do?

What is state of the art?

Am I free to use or do I infringe someone’s

patent?

Which solutions alreadyexist?

What’s going on in a specific technical field?

• Exclusivity enables investment and higher returns on investment

• Strong, enforceable legal right

• Makes invention tradable (licensing)

• Reveals invention to competitors (after 18 months)

• Can be expensive

• Patent enforceable only after official grant (this can take 4-5 years)

Advantages and disadvantages of patenting

Advantages Disadvantages

Alternatives to patenting

• Cheap• Prevents others from patenting

the same invention

• Does not offer exclusivity • Reveals the invention to

competitors

• Cheap (but there is the cost of maintaining secrecy)

• Does not reveal the invention

• No protection against reverse-engineering/duplication of invention

• Difficult to enforce• "Secrets" often leak quite fast

• No effort required • Does not offer exclusivity• Competitors will often learn details

Information disclosure (publishing)

Secrecy (creating a trade secret)

Do nothing

How to bring technologies to the market? How to make use of your invention?

.: Bringing an innovation, or invention, to the market

.: Commercial exploitation of scientific or technological results achieved under university studies/research

the patent

inventor producer

market

inventionproduct

who?

what?how?

why?

Patent is a tool

From the idea to the market…

Marketing intellectual property

.: Understand the market– Talk to potential partners and customers– Draw up confidentiality agreements where appropriate– More than 70% of licensed technologies are from

companies in areas of knowledge or R & D of the inventor

.: Market your technology widely– Publications– Websites– Scientific Conferences and Workshops– Industry events

.: A prototype is very useful for explaining new technologies…proof of concept could be most of the time mandatory

Market: High Tech Uncertainty

Market Technology

What are the needs? Will it work?

How large is the market? Will it go obsolete?

How fast will it spread? Will there be side effects?

Will a standard be adopted? Will there be support?

How will needs change? Will delivery be on time?

IP system in relation to business life-cycle

Trade Secret

Company Name

Utility Model

Patent

Protection of Designs

Trademark

Copyright

MARKETSMARKETS

PRODUCT,SERVICE

PRODUCT,SERVICE

IDIDEAIDIDEA

Information on Technical Solutions Patent Information

Patent databases

Information services

Information on Competitors Business registers

Trademark and Design registers

Information services

IDEA

Product Development and Research

Commercialization

Enterpreneurship

Creativity

Summary of commercialization and IP

• Innovation process is based on collaboration and networking

• Confidential collaboration and risk management is made easy by accurate protection and information usage

SME

PatentOffices

PatentAttorneys

R&D partners

Researchinstitutes

Universities

Marketresearch

Insurancecompanies

Publicfinanciers

PrivatefinanciersCustomers

SuppliersDealers

IP Internal Regulations at FCT Nova | General Principles

.: 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

Technology Applications

Options

New Capital Required

Personnel Requirements

Time Needed to Access Market

Accessibility to Worldwide

Markets and Broadly-Based Applications

Liability and Exposure to

Risk

Comparison Factor

Highest – 10 Lowest – 1

Most – 10 Least – 1

Longest- 10 Shortest – 1

Best – 10 Poorest – 1

Highest – 10 Lowest – 1

1. Include in Current Business 9 9 10 1 10

2. Spin-off 10 10 10 1 8

3. Joint Venture 3 4 7 6 6

4. License Technology 1 1 1 10 1

Source: Vertex Intellectual Property Strategies Inc. ©2004

Licensing: the best option?...

Tech Transfer Tools…

.: IP Rights Assignment;

.: IP Rights Licensing;

.: Spin-Offs/Start-Ups.

Assignment VS Licensing…

Assignment LicensingThe ownership of the patent is fully assigned (sold) to a third party.

The owner of the patent grants a third party the right to exploit the patent, but retains ownership.

Typically, the assignor only gets a single payment arising from the sale of the patent.

The licensor receives royalties and other incomes according to the profits/sales/production of licensed products.

Assignment…

Advantages DisadvantagesImmediate gaining of the financial compensation, by receiving a single and pre-determined payment independent from future profits/sales of the products protected by the patent.

Loss of connection with the patented technology, its future developments, as well as with the assignee (short term relationship).

The assignee takes full responsibility on the patent maintenance, surveillance and enforcement.

Difficulty in doing the accurate market evaluation of the patent at this stage, when the technology is yet to be exploited. Usually, the assignor has a better knowledge of the market, and therefore is in a better position to dictate the value of the patent.

Licensing…

ADVANTAGES DISADVANTAGES

Participation in the market success of the patent, by benefiting from the results of its exploitation.

Need to keep an eye (booth eyes, in fact…) on the licensee business, avoiding being misinformed in what concerns the patent commercial exploitation results.

Possibility of obtaining higher profits rather than in a assignment, considering that the profits are determined according to the sales/production of licensed products by the licensee (market success).

Difficulty to determine the licensee profits

Close relationship with the licensee, increasing the chances of new RD projects and possible sponsorships.

Need to keep watching for the patent maintenance and enforcement.

Why licensing?...

• Benefit to the institution– Reputation– Money– ...

• Benefit to the researcher– Reputation– Money– ...

• Benefit to the applicant/customer– Availability– ......

Common types of licenses

• Technology licenses– Cover patents, know-how, copyrights in software, databases etc.,

confidential information

• Publishing licenses– Cover copyrights in creative properties (books, music, software etc.)

• Trademark and merchandising licenses– Cover trademarks, trade names, trade dress

The licensing challenge:

• Finding the right technology

• Protect the technology in the best way

• Spotting the perfect licensee

• Closing the deal according to YOUR expectations

• YOUR: the institution, the researcher, the TT-office

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Bring ideas to the market…

64

The TTO bridges the gap between academic research and the

marketplace/economic value by developing a go-to-market strategy:

Market is more important than the technology itself (but not by

much…). The TTO provides valuable guidance for those wishing to

embark on the Knowledge transfer process.

academic research marketplace

From the idea to the market

Technology Push

Market Pull

Licensing Agreements• Legal contract that allows a company to make,use and/or sell an

university’s invention; it could a established company or a start-up;

• The company agrees to pay for the use of the IP (e.g patent);

• The payment could be a lump-sum, royalties or other forms(e.g. equity);

• License can be exclusive or non-exclusive (Patent is usually exclusive while know-how is non-exclusive);

• TTO handles the licensing agreements legal terms and negotiations but inventor has a “say” in the whole decision process;

• Option agreement ( for start-ups) : rights granted to be first to negotiate a license(6-12 duration)

Methods for Valuing Technology

• Cost - - look

backward

• Market - - look around

• Income - - look

forward

• Technology Readiness

Level(TRL) - - look

everywhere!

Valuation (Risk) Factors

• Technical merit/competition

• Inventor’s contribution

• Information available/package

• Market size/share

• IP Rights/freedom to practice

• Regulatory hurdles

Business Terms… For the Companies To Ponder

• Diligent development/commercialization

• License initiation fee/equity

• Reimbursement of IP*/patent costs

• Research funding

• Diligence milestones/payments

• Royalties/minimums

Material Transfer Agreements(MTAs)

• Materials transfer between labs that cooperate for an integrated purpose or in a collaboration effort

• Incoming and expending of materials requires TTO support and institutional approval terms

• Could be quite complex especially for biological or other types of materials, cell lines, hazardous products

Material Transfer Agreements(MTAs)

• Between Academic Labs (use for noncommercial purposes, acknowledge all parties in publications,no sending for 3rd parties,responsability in damages during use,non-use in human subjects)

• From Academia to Industry (usually for non-commercial purposes, share manuscripts and proper acknowledgement, damages responsability, fee payment, no third parties)

• From Industry to Academia (Ownership of derivatives and modifications or of potential IP, publication review and confidentiality agreement, reporting and data sharing)

Material Transfer Agreements(MTAs)

• Conflicts and Potential Issues

-Confidentiality-Delay of Publication-Loss of control of IP-Definition of material-Conflicts with existing agreements-Compliance and ethical problems

Non-Disclosure Agreements• Non-Disclosure Agreements (NDAs): often used to

protect the confidentiality of an invention during evaluation by potential licensees.

• NDAs also protect proprietary information of third parties that researchers need to review in order to conduct research or evaluate research opportunities.

• Sometimes they are used while or before filing a patent application during Market Assessment Outlook, in order to establish an Option Agreement with a company (not the general rule!) or to negotiate a future assignment or licensing

Non-Disclosure Agreements

Non-Disclosure Agreements – Rules of Thumb

• Assess the methods to record information• Restrict the object of the agreement to specific

purposes• Impose confidentiality to other company

members• Define if it is “Mutual” or “One-way”• Time for obligation of confidentiality• Public authorithy and institution involvement

Sponsorship and Consultation• The work developed by a researcher might

interest some industrial companies

• So…besides IP transfer there are other technology transfer situations between labs and companies?

Sponsorship and ConsultationSponsored Research Agreements• A company funds a university lab research and a new

kind of agreement is defined• Guidelines:-Project Control(should be the PI lab)-Technical Representatives(both parties in the relationship)-Reporting methods(requirements)-Publishing rights(no veto!)-Invention rights(university owns the invention but…)-Licensing rights(limited time to exclusive license rights)-Discussion and collaboration

Consulting Agreements-Professors and researchers are allowed to spend a limited time on consulting outside their institutions.

-Institutions usually have a procedure manual for this.

-Consulting agreements are also limited to the time dedicated

-Remember: industry is interested in science to increase sales and profits and to have a competitive advantage

Consulting AgreementsBest practices:

-exchange of ideas, not just conduct research on the behalf of the company;

-no use of the consultant/university in company promotional materials;

-limited and reasonable time commitment;

-provision for contract termination by each party; reserved information disclosure;

-invention assigment when it is not developed in the university labs; conflict of interest and IP;

-noncompetition clause interference with University lab R & D

Conflicts of Commitment and Interest

• Is my time really my own? Am I dedicating enough time to the doctoral project?

• Should I publish or patent? Should I start a company or license ?• My research findings affect future licensing and sponsorship

funding?• Are my rights as a Graduate Student safeguarded?• My involvement in a sponsored research agreement conflicts with

my doctoral work and thesis work plan?• Do I have restrictions in presenting my research?• Should I be restricted by a confidentiality agreement? Should I sign

it?• Can I write/defend my thesis with confidential results ?• Should I get involved in a start-up company? Should I star a new

one based on my work?

Questions1-What are the 3 main characteristics that makes an

invention patentable ?

2-A patent could be licensed or assigned by the inventors to third parties. What are the advantages of licensing a patent to an industrial company?

3- What is the best agreement for discussing an invention in the disclosure phase with a potential industrial partner? Why?

Contact: jasl@fct.unl.pt