José Silva Lopes,PhD Science & Education Manager at MIT...
Transcript of José Silva Lopes,PhD Science & Education Manager at MIT...
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
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…
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 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
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 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
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
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 – 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: [email protected]