R&D activities often result in discoveries and inventions.
An invention is any useful process, machine, composition of matter, or any new or useful improvement of the same.
But R&D activities’ Results should not be narrowed only to inventions since they also lead to other types of Intellectual Property. A well-defined IP strategy is a one-step further to the success of technology commercialization.
As soon as you think you may have an Invention that is possible to protect by IPR, communicate such Invention to your R&D Institution. is your doorway for Inventions from NOVA School of Science and Technology and NOVA.ID.FCT.
An IP Strategy should match your plan for Exploitation, Dissemination and Communication Plan. Indeed, when defining this plan your Project’s Results may have different Dissemination routes that will influence the strategy of protecting such Results.
1. Publishing Vs. Patenting
The two main means to disseminate and bring technical and scientific knowledge to the public are patent applications and journal publications.
Regarding journal publications, in the Internet era, two alternative means are available: the defensive publications and the open access model.
The following table from the IPR Helpdesk provides a comparison between Publishing and Patenting that can help you to take an informed decision on how to disseminate the Results generated by your Project.
Figure 7 – Comparison between Publishing and Patenting. Source: IPR Helpdesk Factsheet Publishing v Patenting.
2. Intellectual Property (IP) vs. Intellectual Property Rights (IPR)
Intellectual Property refers to “creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce” (WIPO). It is hence all forms of knowledge that you can create during your research.
Intellectual Property Rights (IPR) are legal titles to which the institution you work for applies to get the right of preventing others from using and exploring said intellectual property, the know-how translated into products that you and your institution have invested so much to create.
Different types of knowledge (IP) are protected by different Intellectual Property Rights (IPR) (see section Intellectual Property Rights to know more).
Both IP and IPR can and should be exchanged between organizations and people, leading to improved use of said knowledge and innovation.
The role of the IP system is to encourage technological innovation by rewarding intellectual creativity.
3. The role of the IP system
In providing protection for their inventions/creations, IP Rights:
Provide incentives to owners by offering them recognition for their creativity and the possibility of obtaining financial rewards;
Promote dynamic competition by encouraging investment in the development of new or improved products or processes, and by encouraging research and development. Investors are more likely to provide financial backing if there is the potential for a return on their investment from inventions that can be patented, then commercialized and exploited, for example.
encourage the dissemination of information about new inventions that may be of benefit to society, because the information disclosed in patents is published (EPO, Teaching Kit, IP Advanced I).
Innovation occurs when and Invention is Exploited.
4. Invention vs Innovation
It is common that the concepts Invention and Innovation are used as synonyms. But they are different (Figure 8).
Figure 8. The difference between an Invention and Innovation
Invention belongs to the realm of research and discovery, basic science and the development of new ideas and knowledge.
Innovation is the new and successful application of those ideas to address issues.
In other words, Innovation only exists when Inventions are Exploited generating social and economic Impact.
Innovation does not imply that a new Invention is developed. Indeed, Innovation can be incremental, with the development of improved uses of inventions already existing, or include new business models, new marketing strategies, etc. Likewise, not all Inventions lead to Innovation – some Inventions were never developed into products or services that generated Impact in society.
Innovation also takes time! For example, the patent of the coffee capsule exists since 1979, but the machine and business model that allowed that this product entered into our daily lives by Nespresso only occurred in 2003 (in Portugal).
Figure 9. Coffee Capsule US Patent
Innovation takes a different mind-set. The process to move form and invention that can be brilliant to having a product/service capable of being produced, sold, exchanged and that creates impact, with social and economical value is a complex and time- and resources-consuming. To develop a product or service, and a business model to get that solution of the market, meaning to innovate, takes a different mind-set from the one used to invent.
The IP system and IPR are the tools by which you can maximize the value of your Invention for Exploitation because they grant the owner an exclusivity of commercialization, which is valuable for investment purposes and provides a competitive advantage in the market.
Exploitation is everything related with the use, sale, marketing, advertising, technology transfer, licensing and other activities that may generate economic return for the organization, for example sponsored collaboration agreements and services contracts. While, in some cases, IPR are not necessary to generate economic value, the possibility to protect a technology should always be considered first, as the commercialization value of the technology reduces substantially without IPR.
See more on Exploitation in the Commercialization stage of the Innovation Cycle.
5. Intellectual Property
Intellectual Property Rights are divided into two main frames:
Copyright, which covers mainly literary and artistic works and software;
Industrial Property Rights, which covers Inventions, and are further divided into Commercial Rights, such as Trademarks, Logos, Designs, Origin Denominations and Geographical Indications; and Technology Rights, that include Patents, Utility Models and Complementary Certificates of Protection (specific cases to extend the period of protection for patents in the pharmaceutical industry).
5.1. Different types of IPR
Different types of IP are protected by different types of IPR. The next diagrams (Figure 10 and 11) summarize the different types of IPR that existEU Law, according with the type of IP, matching with the action owners need to perform to have such IPR granted by the national and international IP Offices.
Figure 10. The different types of IPR – I (source: EPO IP teaching Kit – IP Basics)
Patents are granted for technical inventions. Applications for patents are examined by the patent office they are filed with, in order to determine whether they meet the stringent requirements for a patent to be granted. Patents generally last for a maximum of 20 years from the date of filing (EPO IP teaching Kit – IP Basics).
Utility models offer simpler protection, for a shorter period of time, but are usually registered and published much more quickly than patents (EPO IP teaching Kit – IP Basics).
Copyright does not need to be registered. It automatically exists when a work is created. It protects any type of original, creative expression, including literature, art, drama, music, photographs, recordings and broadcasts (EPO IP teaching Kit – IP Basics). Nonetheless, in some cases, it is useful to register your Copyright. In cases of unlawful use, if the Copyright owner possess a legal prove of ownership, it can defend such Copyright in court.
Figure 11: The different types of IPR – II (source: EPO IP teaching Kit – IP Basics)
Trademarks are distinctive signs indicating the source of a product or service. They include, for example, names, logos and colours applied to the owner’s products or services, which distinguish them from products and services provided by competitors (EPO IP teaching Kit – IP Basics).
Registered designs protect the external appearance of a product. They do not give any protection for technical aspects. They include new patterns, ornaments and shapes. To be officially registered, designs need to be original and distinctive. The artistic aspects of a design may also be protected by copyright (EPO IP teaching Kit – IP Basics).
Trade secrets are an alternative to patents. They cover information not known to the public. If the possessor of the information is careful to keep it confidential, he can sue anyone who steals it (EPO IP teaching Kit – IP Basics).
One product can be protected by a wide range of Intellectual Property Rights. For example, the “simple” example of Coca Cola is protected by the following IPR:
bottle cap – patented
Coca Cola – Registered Trademark
Label text – Copyright
The Coca Cola Company – trade name
Bottle – registered Design
Recipe – trade secret
At IRIS we analyse your technology and check which is the most appropriate IP strategy to protect it and maximize its potential for Innovation.
6. Main Principles of Intellectual Property Rights
An Intellectual Property Right, for example, a patent, grants its owner the right to prevent others from making, using, offering for sale, selling or importing infringing products.
In other words, a granted IPR rives its owner the right of exclusivity for exploiting such Invention.
The exception is the use of such IPR for non-commercial purposes such as private use or academic research.
The rights conferred by Intellectual Property Rights are:
Limited to territories
IPR are territorial rights. In general, the exclusive rights are only applicable in the country or region in which a patent has been filed and granted, in accordance with the law of that country or region.
Limited in time
Intellectual Property rights grant a monopoly on the intellect creation for a limited amount of time depending on the type of right that is protected. Examples:
Copyrights – 70 years after the death of the author
Patents – 20 years after the registration
An IPR grants to its owner a monopoly on the product of the mind protected. Nobody without the IPR’s owner authorization may use, develop, fabricate or sell the protected item.
All intellectual works protected by IP rights will, at some point of the process and depending on the type of the IP right, be disclosed to the public, in order to foster societal innovation.
Patents are considered as a contract between the Applicant (owner) and society.
Applicants and patent owners are interested in benefiting from their inventions. Owning a patent gives them the right to prevent others from making, using, offering for sale, selling or importing a product that infringes the patent, for a limited amount of time and the country for which the patent has been granted.
The exceptions to this are use of the patent for non-commercial purposes, including private use and academic research.
Society is interested in:
Encouraging innovation so that better products can be made and better production methods can be used for the benefit of all;
Protecting new and innovative companies so that they can compete with larger established companies, in order to maintain a competitive economy;
Finding out the details of new inventions so that other engineers and scientists can further improve them; and
Promoting technology transfer, that is from universities to industry.
In return for this protection, Applicants must reveal their inventions to the public, so others can build on them. This takes the form of publication of the application by the relevant patent office.
This social contract is institutionalised in the form of patent law.
The patent right is an agreement between society and patent owner. The patent owner gets an exclusive patent right for up to 20 years, but after 18 months after filing, the government has to lay open his invention to the public
This agreement allows other persons or companies to develop new ideas based on published inventions, so they do not spend time and money inventing the same twice. This is the general idea of the patent system. You both reward the patent owner and support technological development.
8. Inventorship, Authorship and Ownership
The concepts of the ownership of Intellectual Property (IP) and the inventorship or authorship of creations are often confused. Indeed, they are different and is crucial to understand how these concepts are different to properly to manage these IP Rights, as their improper handling could cause real problems, such as the validity of IP Rights granted or the risks of legal disputes (IPR Factsheet: Inventorship, Authorship and Ownership).
Ownership – recognizes the right to possess that invention, namely a proprietary right. The proprietor of the invention is known as the owner and has the right to restrict others in their use of the IP it owns. In case of the Academia, the R&D Institution is the owner of the IP Rights.
Inventorship – identifies the creator of an invention, the so-called inventor. In case of the Academia, the researcher(s) is(are) the inventor(s) of the Invention protected by the IP Rights.
To properly determine who is an inventor, their ‘active contribution’ to the invention should be taken into account, in the sense that without their personal involvement the invention would not have been devised.
Authorship – used in the Copyright domain, and more precisely in a publications context, the author produces a piece of writing or other specific publication.
In Academia, a researcher that has contributed to a scientific paper either by performing experiments or making a revision of the text, is usually considered an author. That is not the case for determining who is the inventor; to be considered an inventor, the person produced work that is critical for the existence of the invention. Natural persons that have an idea but that did not participate in the making that idea a reality, a tangible asset, are not inventors. Indeed, under US patent Law, inventors need to fill-out a declaration stating which claim of the patent document they contributed for.
9. Patentable Inventions
Under the European Patent Convention or EPC, “European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.”
The patent laws usually require that, in order for an Invention to be patentable, it must:
To be patentable, and Invention must be a new solution for a specific technical problem. In patent law terms, such Invention should be a technical teaching which defines a relation between technical features and technical effect, and it must be reproducible.
Patentability requirements vary from country to country. The European Patent Convention (EPC) provides a comprehensive list of matter excluded from patentability in Europe (www.epo.org/epc).
What can be patented?
Patentable Inventions can be chemical substances, pharmaceuticals; processes, methods and uses; products, devices, or systems.
Indeed, one single patent document, for the same Invention, can grant protection for 3 types of claims:
The strongest protection is provided by granted product claims – these types of claims are the easiest to enforce, since the unauthorized sell of a protected product is easier to prove in court than, for example, a process claim.
What cannot be patented?
In most countries, patents cannot be granted in respect of:
ü Computer programs
ü Medical and surgical treatments
ü Mathematical methods
ü Business methods
ü Discoveries, science theories
ü Aesthetic creations
ü New species of plant or animal
ü Inventions which are contrary to moral standards and public order (e.g. instruments of torture)
ü The human body and any non-separate part/s thereof
Can an Idea be Patented?
The simple answer is no—you cannot patent an idea for an invention. The invention itself must be produced. While all inventions start with an idea, not every idea can be called an invention.
If a person has an idea and asks another to produce said idea into an invention, the person that actually developed the invention is the inventor, and not the person that originally had the idea but that didn’t know how to make it a reality.
To be considered novel, an Invention must not have been previously publicly disclosed before the date of filling of the patent application. If the Invention has already been revealed to the public by a scientific article, a conference, an abstract or poster, a social network post, there is nothing to trade for exclusivity, and therefore no social contract, and hence no patent.
For a European patent to be granted by the EPO, the invention must be new at the date of filing of the patent application.
“New” means that the invention does not form part of the state of the art.
The state of the art comprises everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.
How does the patent examiner determine if an invention is new?
be able to decide whether an invention is new, the patent examiner responsible for examining the application first has to define the prior art. To do this, he perform a search into the prior art, which will usually involve consulting databases containing patent documents and scientific journals, as well as searching the internet and other media.
The documents found in such search will be compared with the claims of the patent application and checked whether the Invention differs from it. If none of the documents discloses all the features of the claim, the Invention as expressed in the claim is new. If, on the other hand, there is one document of the prior art that discloses all the features of the Invention claimed, then the Invention will not be considered new and hence the patent application will not be granted.
It is vital that you keep your invention confidential until you have filed your application, so seek advice before you decide to publish anything related with the Invention that you wish to protect.
The inventive step is a much more subjective requisite for patenting and is usually dependent on the conversation between the IP office of the country where the patent application has been filed and the Applicant, supported by the Inventors.
At the European Patent Office (EPO) the inventive step is assessed using the problem-solution approach. This approach assesses in an objective manner whether the solution proposed to the problem disclosed in the patent application is obvious or not to the person skilled in the art.
The person skilled in the art is a legal fiction. He or she is considered to be a practitioner with a general technical knowledge in the relevant field, with access to the entire state of the art and capable of performing routine work and experimentation. He does not, however, have any inventive skills.
How does the patent examiner determine if an invention is inventive?
To ensure an objective assessment of inventive step, the EPO, for example, uses a structured problem-solution approach which lessens the risk of hindsight.
The questions asked during this analysis can be grouped into three stages.
In stage 1, the examiner considers the differences between the claim and each document. He then chooses the document which comes closest to the invention (hereinafter designated as D1). This is normally the document which has the most features in common with the invention.
In stage 2, the examiner notes down differences between the claim and D1. He thinks of advantages based these differences.
The next question is whether the skilled person would have overcome the drawback of D1 in the same manner as the inventor did. To answer this question, the examiner formulates a so-called objective problem, which is usually how to achieve the same effect as the invention.
In stage 3, the examiner is looking for an answer to that question. The skilled person realistically only has access to the prior art in the technical field of the invention. To come to a fair judgement, the skilled person should look at documents from the field of the Invention only. Next, the examiner checks if the other documents that he/she obtained from the prior art search are concerned with your invention regarding its technical features or advantages. The examiner will do the following hypothetical questions:
If the skilled person looked at D1 in combination with the other documents, would he find a solution for the problem your Invention solves?
What teaching would he take from that additional document?
The examiner may therefore arrive at the conclusion that the claim is inventive, if the two documents in combination would not arrive at the claimed invention. A patent could thus be granted on the basis of this claim. If both documents arrive at the claimed invention, the patent would not be granted.
If the Invention is considered novel, it also has to be considered inventive and with Industrial Aplication.
For a patent to be granted, the Invention must have Industrial Application, i.e., the invention must have at least one practical purpose and must be reproducible.
Remember that in a patent document there is no evaluation of quality of the invention or its economic advantages. Only the technical qualities are relevant, meaning the technical characteristics, how they relate to one another and the technical effect they produce.
You can use patents or patent applications as background of your research for free. However, if your Results have the potential to be economically exploited and such Background Patents are granted and in force in the territory where you wish to commercialize the Results, a license should be obtained from said patent owner.
File an application before you publish! Contact IRIS for advice.
At IRIS we analyse your Invention and perform a state of the art search in free databases such as Espacenet, to evaluate if the Invention is novel and inventive. This process is interactive and performed with the Inventors. Submit your Invention using the IRIS Technology Disclosure Form
Last updated in: 01/03/2021