Procedure adopted by Politecnico di Milano
Politecnico di Milano has developed a policy in order to better manage
the evaluation and protection process.
The “Invention process” is characterized mainly by the following
steps:
- completion of the “Disclosure Form”
- evaluation of patentability requirements and the potential commercial
value
- filing of the patent application
- identification of potential licensees
- negotiation of a licensing agreement
One of the most important steps in the “Invention Process” is the
drafting of a document (Invention and Technology Disclosure form), which
essentially has a dual purpose:
it contains a detailed description of the invention.
it constitutes a declaration of the inventors to transfer the
ownership to the University.
The detailed description of the invention allows the Technology Transfer
Office (TTO) staff to conduct an effective novelty search.
TTO staff evaluate the content of the 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, a national patent application will be filed
as a priority application.
TTO staff will select a patent attorney who will be responsible for
drafting the patent application. The TTO staff will send the patent
attorney a detailed description of the invention, with a list of the
closest prior art documents.
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.
An application may be filed at one of the 103 Chambers of Commerce or
directly at the Italian Patent and Trademark Office (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 can be
disclosed to the public if advanced accessibility has been requested by
the applicant, otherwise it is available after 18 months, as per 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 \euro 200, within 4 months of 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 a European Patent
(EP) or any other foreign extensions.
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 with finding companies
potentially interested in the patent. This phase requires working
closely with the inventor.
License agreements are the best way to ascribe value to an academic
invention.
After an industrial property title has been filed or registered, the
next question is how to exploit the invention.
For a company, there are two main options: a) implementation by the
company itself, and b) sale, licensing or cross-licensing entrusted to
third parties.
By contrast, universities have a rather restricted scope of action. They
are not allowed to market inventions directly (except through a
spin-off) and must therefore identify a company on the market to
negotiate either a license agreement for the use of the patent (either
exclusive or non-exclusive) or an assignment agreement, which is
basically an outright transfer.
A license agreement, which may relate to either patents or know-how or
both, is an atypical (free form) agreement and has some limitations,
such as:
1. the territorial scope: the holder has no exclusivity (the invention
can be freely implemented) outside the borders of the states in which
the exclusive rights title has been validated.
2. the time scope: the duration of protection is limited (twenty years
from when the patent application is filed) and affects the duration of
the agreement.
3. the scope resulting from the right of use: scope of coverage
determined by the contents of the claims.
4. the market sector or field of use.
During negotiations, the potential licensee must check carefully:
● the ownership of industrial property rights
● the legal status
● the validity of the titles
● the time to market
● the estimation of the fields of use and of the markets
● the freedom to operate
The agreement may provide for:
● a license on later improvements
● a collaboration to facilitate the implementation of the invention
operation
● any sub-licenses
The costs of maintenance of industrial property rights are usually borne
by the licensee.
Other useful tools during negotiations are the following:
confidentiality agreements, letters of intent, and joint development
agreements.
The only guarantee that the licensor takes on is the one relating to
ownership, whereas guarantees are expressly excluded from agreements
with regard to:
● the validity of industrial property titles
● the patentability of the inventions
● the presence of infringements
Payment is generally in monetary form [reimbursement for the
achievement of the titles; assumption of future maintenance costs;
payment of a fixed sum as a down payment/lump sum, possibly divided into
several instalments or royalties, usually calculated as a percentage of
sales turnover (or periodic fees)], but it can also be non-monetary
[cross-licensing, contributions in kind (e.g., equipment, research
contracts)]. [2]
Within one year from the filing date, it is necessary to decide whether
the patent should be extended or not at an international level.
PCT is basically an option for future patenting, that provides the
applicant with a further delay before deciding whether or not to apply.
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.