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Patents : do’s and don'ts for academic researchers
Lien Geunis, Tech Transfer Office
Overview
1 | General introduction
Lien Geunis (Tech Transfer Office)
2 | Patents: do’s and don’ts for academic researchers
Bart Laenen & Lieve Coenegrachts (LC Patents)
General introduction – IP at Hasselt University -
Who owns the intellectual property rights on my research result ?
Codex Higher Education : distinction between economic intellectual property rights rights and moral intellectual property rights
Economic intellectual property rights on research results belong to theuniversities
Moral intellectual property rights on research results remain vested in theresearcher
New biosensor developed by researcher
Hasselt University can file for a patent application and exploit the invention
(=economic rights)
Researcher is however always recognized as inventor (=moral right)
General introduction – IP at Hasselt University -
Projectspecific collaborations
In collaboration with project partners, Hasselt University will conclude agreementsregarding ownership of IP (including patents)
Example :
Research carried out in a consortium with other project partners : IP can be shared with or transferred to project partners
Structural collaborations
Structural collaboration with strategic knowledge centra, containing oftentimesprovisions of shared IP
Examples :
Imo-imomec : imec
EDM : iMinds
Biomed : Vlaams Instituut voor Biotechnologie (VIB)
General introduction – from research result to patent application –
From research result to patent application :
What steps need to be undertaken within Hasselt University?
General introduction – from research result to patent application –
First step: invention disclosure form
Researcher: mandatory notification of research results to the TTO
Document can be found on intranet webpage of TTO
TTO: takes the lead in protection and exploitation of research results
General introduction – from research result to patent application –
Second step: analysis of research result
TTO: involves an expert for an objective, well funded analysis
Analysis with respect to patentability
New ?
Inventive ?
Industrial applicable ?
Analysis with respect to exploitation potential in a relatively short timeline: exploitation of the patent should be possible within a maximum of 2 years’ time
Are people/companies willing to pay for this patent?
What are the competitive products/players already on the market?
…
Researcher: provides TTO/expert with indispensable input and remains available for further discussions
General introduction – from research result to patent application –
Third step: internal approval and preparation
TTO: obtains approval from the Patent Board and takes care of all financial aspects (separate cost centre to be created)
Researcher: remains available for input and discussions
Fourth step : patent application
TTO: instructs patent attorney to file for a patent application
Researcher: remains available for input and discussions
General introduction – from research result to patent application –
Final step: exploitation of the patent application
TTO: responsible for generating income through exploitation: granting
licenses or selling the patent to third parties
Researcher: acknowledged as inventor
“Regulation of the Associatie Universiteit-Hogeschool Limburg with respect to
valorization”
Financial compensation for researcher (30% of net income) and research
institute or group (40% of net income)
Moral consideration of patent application in academic CV
General introduction – support from Tech Transfer Office –
Heidi Cardous
- GLW
- EDM
Steven Van Hoof
- imo-imomec
- CMK
General introduction – support from Tech Transfer Office –
Vincent Buyens Elke Piessens
- BEW - Construction
- Censtat
- CMK
General introduction – support from Tech Transfer Office –
Lien Geunis
- IMOB
- Architecture
- Questions about IP :
- Patent portfolio ?
- Flow of patent applications within Hasselt University ?
- Other forms of IP : copyright, design rights, iDepot, …
General introduction – Case –
Research result “Captchat”
Prof. dr. Johannes Schöning (EDM/iMinds) and fellow researchers from
Newcastle University developed a discrete communication technologyto help people and businesses keep communications private in a very easy,
user friendly way
General introduction – Case –
Procedure
Researcher: notifies the research result to the TTO
TTO: takes the lead in the following procedural steps:
Seeking advice with respect to patentability and market potential
Criteria of novelty, inventive step and industrial applicability appear to be met
71% of Americans is “deeply concerned” about online privacy; security tools for online
communication have been around for decades but users find them too complicated
Negotiating a joint ownership agreement with iMinds and Newcastle University as
co-owners of the research result
Submitting the file for approval to the Patent Board: positive advice
Taking care of all the financial aspects of the patent application
Instructing a patent attorney to file for a patent application: September 2014
Verifying exploitation possibilities in a detailed manner
TTO takes the lead; researcher provides TTO with indispensable input
General introduction – more information on IP –
Overview
1 | General introduction
Lien Geunis (Tech Transfer Office)
2 | Patents: do’s and don’ts for academic researchers
Bart Laenen & Lieve Coenegrachts (LC Patents)