Assessment

The Assessment of a Technology/invention starts formally at IRIS with the submission of a Technology Disclosure Form (see section Submitting a Technology to IRIS).

Only after the complete filing of this form will IRIS team have all the information it needs to perform the double technology assessment (Figure 12):

a) Can it be protected by IP Rights and what is the best IP strategy of protection?

This includes a patent database prior art search performed by IRIS with the close participation of the inventors

 b) Does the technology have potential to develop innovative products and services that can be commercialized?

This includes a search performed by IRIS in terms of markets where the technology can be applied.

Figure 12. Process of evaluation of inventions/technologies before protection

After this analysis, IRIS submits a report of invention to the designated boards of decision of your Institution. These boards will analyze IRIS’ Report, potentially ask more questions, until a final decision on the willingness of holding the IP Rights is made by the legal representative of your Institution.

If the decision is positive, IRIS will work with you to get the invention protected, resorting to trusted IP attorney firms, and to determine the best approach for commercialization.

If the decision is negative, Universities and R&D IP policies foresee the waiver of IP rights to the inventors in case they desire so. If this waiver of rights occurs, the inventors are free to protect and commercialize the technology as they see fit, at their own expenses and efforts.

If the inventors do not wish to have the waiver of rights, IRIS can continue to work with the inventors, discussing potential applications and IP strategy as well as a road-map of product/service development that maximizes the probabilities of uptake by the market, by mitigating risk of investment at initial stages of development.

Check IRIS and Madan Parque joint initiative – R2Value

If the decision to proceed is positive, IRIS will also take care of any IP Ownership Contracts that need to be negotiated between eventual co-owners of the technology.

 In case of a joint invention or trade secret, IP Ownership Agreements regulate:

     The percentage of ownership of each co-owner in the joint invention. This percentage is very important since it commonly dictates the % of sharing of costs of protecting the joint invention and the share of profits resulting from its commercialization.

     Who manages the IPR

     Who is responsible for searching and negotiating with business partners

     What happens if a co-owner does not want to share costs or does not pay its share

The success of a transfer of Research Results to the market is dependent on many factors, being market and product fit and funding some of the most important. However, inventor willingness to participate and collaborate at all stages of the knowledge transfer process continues to be the main factor to influence a positive transfer.

1.  Patent database search

Before going to the lab, it is usual to perform a literature search to get to know the field where the research is inserted, what other scientists are testing, which are the unanswered questions, which are the most common experiments, gold-standards that your peers are doing. This search establishes the basis from which you will work.

Patent documents are other documents where you can find this information and much more. See section Do a patent database search

Patent database search, at this stage of the innovation cycle is performed to have an initial assessment of the patentability requirements – novelty, inventive step and industrial applications.

If the invention/technology as it was communicated is found to not be novel or not having an inventive step, rendering the possibility of having a granted patent very difficult, IRIS recommends not to pursue with the investment in a patent application.

Patent applications are legal instruments which first and foremost goal is to prevent others from using the invention/technology that is disclosed. If your purpose is to have wide dissemination of your research, and establish state of the art, investing in publishing in a higher impact journal may be a more cost-effective approach than filling a patent.

Journal papers are also searched by examiners to attack novelty and inventive step. The first thing that examiners will search is the name of the inventors. Hence, if your purpose is to prevent others from patenting an invention/technology like yours, publishing a scientific paper is sufficient to establish state-of-the-art.

2.  Commercial Relevance assessment

In this second branch of the assessment, IRIS will work with you to brainstorm different applications of your inventions that will uncover different industry and markets where your invention/technology may be implemented and exploited.

Such markets and industries’ assessment will first be analyzed by means of internet searches, aiming to determine the size and percentage of growth of each market; segmentation of the market in terms of geography, types of products, materials, uses or technologies; and trends and regulations of such market that may indicate that your invention/technology has more or less capacity of replying to a real market need.

The state of development of the invention/technology will also be determined, together with the route of development that you, as researcher, believe it would be necessary to have a product. The state of development assessment follows the internationally accepted scale TRL, developed by NASA and adapted by the European Commission (Funding & tenders (europa.eu))

At this stage, commercial relevance assessment will take advantage of the early engagement of a company. If your technology has been developed with a commercial partner or you have already a written manifested interest of a company in the invention/technology, the commercial relevance assessment will be positive.

3. Patenting costs

Protecting an invention by patents is expensive.

During the assessment stage you will also be asked whether you have budget in public funded projects or private-funded projects to support the patenting process.

Make sure that you plan for IP Rights when preparing your budget proposal.

Make sure that you include existent patents in new public funding applications as Background IP – the maintenance fees of such applications are usually eligible expenses.

If you have no such budget, IRIS may make a request for funds to the legal representative of the corresponding legal entity to support such process. However, this is not common practice and is only resorted to when inventions have already a written interest from a company but lack the funds to maintain the patent application.

 

Table 1. Patent applications medium value – PT2020 reference values and IRIS suggested values, based on experience.

IRIS is also alert to any funding opportunities to support the filing and/or maintenance of patent applications. Regularly check IRIS opportunities page.

4.   Decision process

Based on the patent search and commercial relevance assessment, IRIS will prepare a written opinion on the relevance of protection the invention/technology disclosed and propose an IP strategy and Valorization Plan that will be submitted to approval to the legal representative or other person to which the decision power of IP matters has been delegated to. The time-length of decision follows the IP policy regulation in force at the date of invention disclosure.

The legal representative of the institution, advised by the appropriate service, will then communicate the agreement or not to IRIS recommendation, after which, IRIS will inform the inventors of the decision.

The final decision of protecting a technology by IPR, particularly Patents, is performed by NOVA’s Rector, in case of NOVA School of Science and Technology and NOVA.ID.FCT’s President, in case of NOVA.ID.FCT.

If your technology has been developed with third parties, IRIS will also communicate the invention to such parties and ask their interest in protection and exploiting the invention/technology. If the reply is positive, IRIS will negotiate with such party the terms of the IP ownership and Exploitation Agreement.

 

If you develop a technology jointly with scientists from another institution and such scientist decides to communicate the results to their own office of IP issues and technology transfer, make sure that such office enters in contact with IRIS. IRIS manages several IP Rights jointly with national and international institutions and is part of several national and international networks of innovation managers.

Last updated in: 28/02/2021

Knowledge Valorization @ IRIS by IRIS is licensed under CC BY-NC-ND 4.0