Invention process @ Politecnico di Milano

Massimo Barbieri massimo.barbieri@polimi.it

Professional background

Work 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

Introduction (1)
Most Italian universities have started to set up specific TTOs from 2001, That year was introduced the professor privilege legal status

From 2004 to 2006 about 50% of TTOs were established

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Introduction (2)

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 And Yet it Does Patenting and Licensing in Italy; Differences and 2004 toMove! 2006 University about 50% of TTOs were established Similarities 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

Introduction (3)

Ways of protecting intellectual works

Patents Utility models Industrial designs Trademarks

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Introduction (4)

What is a patent? A patent is a legal title granting the right to prevent third parties from commercially exploiting an invention without authorization (negative monopoly right) What is an invention? Its the novel solution of a technical problem Patentability requirements Novelty Inventive step Industrial application

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Introduction (5)

Utility models This protection does not exist in all countries. Patents and utility models differ in the level of the inventive step required. A utility model consists of improvements in shape which dont constitute a solution of a technical problem but rather confers a particular utility on a product, which already exists.

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Introduction (6)

Ownership of rights Under the Italian's Industrial Property legislation, the inventorresearcher 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.

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Invention process @ Politecnico di Milano

According to the procedure used by Politecnico the Invention process is characterized mainly by four steps: compilation of the Disclosure Form (an internal document consisting an invention description) valuation of patentability requirements and the potential commercial value filing of the patent application identification of potential licensees negotiation of a licensing agreement

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TTO functional model: IP protection (1)

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DF drafting First contact Meeting Inventor contacts

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Novelty search

yes

no

One of the most important step in the Invention Process is the drafting of a document (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.
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TTO functional model: IP protection (2)

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TTOs 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 industry 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

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TTO functional model: prior art search (1)

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When are patent searches carried out?

Filing

Before thesis

TTO Inquest 12 months

IT

PCT

Patent publication

12 months Patentability search Patentability search

6 months Patentability search Monitoring

State of the art search

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TTO functional model: prior art search (2)

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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

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TTO functional model: prior art search (3)

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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 understand the invention: find out essential features
keywords: identify a group of words (and synonyms) classification: select one or more classification codes corresponding to the invention databases

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TTO functional model: IP protection (3)

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TTO

Patent filing

Attorney

yes

no

Inventors

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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National filing

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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.
Source: G. Moradei Patent information in Italy, World Patent Information, 31 (2009), p. 19 - 31 TTO 2012

Patent strategy @ Polimi (1)

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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.

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Patent strategy @ Polimi (2)

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DE

PCT filing 0 12 16

Publication 18 22 28 30

EP US

Priority IT

ISR + Written Opinion

Demand (optional)

IPRP 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