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:
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:
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.