During your research activities you are constantly creating novel knowledge or Intellectual Property (IP), either through the Master and PhD thesis that you supervise, the papers or conferences you publish, the collaborations you establish with other entities, being such entities other R&D institutions or companies, among others.
Such IP should be managed since the inception of your research Idea, so that you can maximize its impact, either social or economic.
- List of customers
- Methods and processes
- Objects (e.g. materials, machinery, art works)
- Documents and publications (e.g. books, scientific articles)
- Know-how of the organisation’s employees and collaborators, which they have acquired through training, study, or experience.
One way of maximizing the impact of the IP you create during your research activities is to find out early in the process of development if there is any chance of creating novel and inventive processes, methods, machines or any new improvement of the same, that can constitute IP that can be transferred to market and society. Such IP should be managed throughout the Research and Development stage (R&D).
At the Idea Stage of the Innovation cycle, you should:
Identifying and creating valuable IP and bringing research results to the next stage of development so that they can be transferred to society and markets, is one of the institutional objectives of many Universities and R&D institutions, a trend that NOVA.ID.FCT and its associate NOVA School of Science and Technology also follow.
In this context, an institutional IP policy is a prerequisite for successful collaboration between Academia and Industry. An IP Policy provides structure, predictability, and a beneficial environment in which enterprises and researchers can access and share knowledge, technology and IP Rights (WIPO, 2020).
An institutional IP policy is a formally-adopted document, which states:
● rules on the ownership of the IP;
● obligations of stakeholders involved in the technology transfer process;
● rules on how to accurately identify, evaluate, protect and manage IP for its further development, usually through some form of commercialization;
● guidelines on the sharing of economic benefits arising from the commercialization of IP.
Other important document concerning the IP Policy of a Higher Education Institution is the formally-adopted document stating the rules for publishing Master and PhD Dissertations.
At NOVA, the deposit of dissertations and thesis in the NOVA´s institutional repository (https://run.unl.pt/) is mandatory. This policy is in line with the Decree Law n. 285/2015 which regulates the deposit of these documents at national level.
The deposit of thesis and dissertations at the NOVA´s institutional repository, however, does not mean that the works are immediately public: the deposit can be made subjecting an embargo to the public disclosure which, at NOVA, is of a maximum of 3 years.
Your research institution follows its own IP Policy. Please contact IRIS to know more about NOVA.ID.FCT and NOVA School of Science & Technology IP policies.
The Institution you work for, i.e. your Employer is the owner of the IP that you create in the frame of your work contract.
As an Inventor, you should communicate such invention to your Institution and abstain from publishing until a decision has been made on the legal protection of your invention.
In case of legal protection, the Institution will be the applicant, the owner of the IP Rights, and you and your team will be designated as inventors/creators. As inventors, you are entitled to share eventual profits of commercialization of the inventions.
In the case you have developed your research with third parties, there should be a collaboration agreement regulating the terms of such collaboration and the ownership and management of the IP. If your partner has contributed financially and/or intellectually to the invention, it should also have IP Rights based on said invention.
In the case you have developed your research with students, if their participation was essential for the invention to exist, they should also be considered as inventors. Because they do not have a formal work contract with the research Institution, an IP waiver of rights on the invention declaration will be necessary.
Data from the EPO (2006) states that:
- 25% of all R&D efforts are wasted each year on inventions that have already been invented. Replication of R&D results costs anything up to EUR 60 000 million a year in Europe alone!
- 80% of the information which can be found in patents is not available anywhere else in comparable detail;
- Considering that only 10% of the public patents are in force, you have 90% of patent documents disclosing great solutions for free!
Conducting a patent search is very useful for several purposes. Patents include technical and legal information and can be used to:
- guide the definition of an organisation’s IP strategy (identifying, for example, any barriers to developing an IP strategy, the avoidance of obstacles, etc.);
- define a state of the art (to find out what already exists, to check novelty, to improve the quality of a patent application, to understand the IP landscape surrounding your projects and IP);
- check for freedom to operate (to check if you do not infringe someone else‘s rights, to search for validity of third parties’ IP);
- check if someone is not in a position of infringing your rights (infringement still needs to be proved);
- keep track of who is doing what (continuous monitoring of patent applications filing)
- Review the literature not only in articles but also in patents before your start the project or write your funding proposal
- Search again at project milestones: your project might have changed and other inventors might have been active too in the same field you do
You can make this patent search using free patent databases, such as Espacenet, the database from EPO that gathers more than 90 million patent documents from all over the world.
At IRIS we support you by providing information on your Institution IP policies, training in patent database search and by conducting with you the prior art search before and during the development of your project. Contact the Department of IP & TT.
An IP exploitation and dissemination work plan is critical to effectively manage the IP of your research project, being mandatory for some types of funding, particularly European Commission funded projects.
“Dissemination” means sharing research results with potential users – peers in the research field, industry, other commercial players and policymakers). By sharing your research results with the rest of the scientific community, you are contributing to the progress of science in general.
Telling; Dissemination stimulates use for further research, commercial development, education, informing policy, etc.
“Exploitation” is the use of results for commercial purposes or in public policymaking.
Using; exploitation can be commercial, research, policy guidance,educational, etc.
IRIS suggests you take a step-by-step approach to dissemination and exploitation when developing your proposals for a funding application.
Please consult the following documentation prepared by IRIS, for further information on this subject:
At IRIS, we support you in the definition and revision of your IP exploitation and dissemination plan, with the Departments of IP&TT and Business Development & Funding working together to provide you with the best answer.
Last updated in: 01/03/2021