Protecting Intellectual Property (IP)

At the university, the pressure to publish interesting research results is huge. However, protecting and publishing research results can be combined perfectly.

The main thing to remember is to protect the invention first and to publish it later. The dangers of disclosure, especially in an academic context, are real and need to be taken seriously as soon as you start to think about your research results as a discovery or invention. Intellectual property (IP) is the result of creations of your mind and the hard work you invest in your research, enabled by the VUB and/or the EhB. It’s all about creativity, innovation and enterprise.

Some basic knowledge about the most common forms and concepts in IP protection will enable you to disclose it safely, be recognized as the inventor, profit from its commercial exploitation, and prevent (or discourage) unauthorized use by others. There are several forms of IP rights. Usually, the best way is to combine these strategically.

What you need to know about patents
Prior art
Espacenet

Patents as strategic tools

Invention disclosure
Freedom to operate (FTO)
Enforcement of IP, infringement and litigation

What you need to know about patents

The most well-known – but certainly not the one and only – form of IP protection is patenting, “octrooieren” in Dutch.

A patent gives the applicant the right to stop anyone from commercially exploiting his invention. It is nothing more than a form of legal monopoly in return for public disclosure of the invention. Third parties need to negotiate a license agreement with the patent holder in order to be allowed to use the invention. You need to apply for a patent in each country where you want a monopoly on your invention. A patent will not increase the commercial value of your invention. 

When no one is interested in paying for your invention, a patent will not make a difference. BUT, when your invention has commercial potential, a patent may be the only way of ensuring any financial benefit from it. However, the potential earnings should be weighed against the costs and the complexity of patenting. Careful consideration is the key. A patent lasts for 20 years (after filing) but only if the annual renewal fees are paid.In order for your research results to be regarded as a patentable invention, at least a significant part must be completely new (more specifically: never been disclosed to the public). 

You cannot obtain any worthwhile IP rights for an invention that is not novel. Without solid IP rights the invention will probably attract little interest from candidate licensees. Furthermore, if the invention (or part of it) is not novel, someone else might have the rights to it and you risk facing legal action if you try to exploit the invention without permission.

Prior art

To evaluate the novelty of an invention, a thorough prior art study must be performed. Prior art might be anything that proves that your invention (or a crucial part of it) is already known. It is sufficient that anyone, anywhere, at any time has previously described or shown or made something that contains a use of technology that is similar to your invention. A prehistoric painting can be prior art as well as a drawing in a comic. A prior art search may take a few minutes or many hours or even days.

You must however be prepared to spend all the time it takes to be confident that you have done a proper search. The mission is to find evidence that disproves the novelty of your idea, invention, research results. Your hope is that you’ll fail, but try to be your own biggest critic and do not ignore evidence you may not like. Don’t just scratch the surface! Keep records of everywhere you look and everything relevant that you find. Also, update your prior art searches periodically as you develop your idea/invention.

Espacenet

Thanks to the Internet and to the international classification system used to organize inventions by subject, it is quite easy for inventors to do their own patent searching. The European Patent Offices’ free database Espacenet contains over 60 million documents collected by patent offices in many countries.

To maximize your chances of finding relevant information, spend some time thinking of keywords or search terms which best describe your invention/idea. Obvious key words or general terms will be unhelpful. The most productive search terms may be specialist technical terms that you do not know. Being an expert in your field of research will allow you to identify these terms. It may also take a few preliminary searches to find better keywords. When you have listed the relevant keywords, prepare strings of up to four keywords (four is the maximum number when using, for example, Espacenet) in different combinations. Find plurals and variants and use truncations to cover them (in Espacenet one can use ‘*’).

In patent searches it is very helpful to use the patent classification system ECLA. Try to find out by a number of preliminary searches or by browsing in the list of patent classes (Espacenet provides a separate search function to find the proper patent class) the classes relevant to your invention/idea. It is important not to think too narrowly.

Patents as strategic tools

It is possible to use a patent application for purely temporary advantage and to decline substantive examination and abandon the application at some later stage. You might want to use it to protect your idea for long enough to attract potential customers and business partners, e.g. until publication of the application. Your published application will also be prior art, which could prevent competitors from patenting the same or a similar idea in the future. This might leave you with sufficient freedom to operate even if your application is not subsequently granted.

Note that patenting doesn’t necessarily exclude publishing, as long as you file the patent before you publish. Nevertheless, the almost certain outcome of abandoning a patent application is that it becomes much more difficult and virtually impossible to license your invention to any company. A (granted) patent may also help to persuade investors that your idea is worth backing. 

Patents are usually crucial when spin-offs are looking for financing. Think of a patent as more than just a means of protecting an idea. It is an instrument to generate licenses, research partnerships with industry, investment and funding. The period between filing the patent application and substantive examination in various countries where you want to obtain patent protection, should be used to seek opportunities to exploit the invention.

Many companies delay filing for patents until products are almost ready for market in order to gain as much profit as possible in the maximum patent term of 20 years. The disadvantage of early filing is that you may incur substantial costs before you know whether your idea is commercially viable and to have a license deal in sight. The disadvantage of late filing is that someone may file a very similar idea before you or that your idea becomes available to the public thereby ruining the novelty of your invention.

Even if an invention is novel, novelty on its own may not mean much. For an invention to have good commercial potential, it needs to be a significant improvement on prior art. For an invention to be patentable, it must include an inventive step that is non-obvious. Ideally you have a good understanding of the exploitation options before you even file a patent application.You don’t want to spend thousands of euros on an invention that is eventually left with no exploitation options.

Invention disclosure

Deciding on all these matters is often very difficult and subject to argument. VUB TechTransfer can help you with this and will evaluate your dossier with you and/or a patent attorney. The university obliges its researchers to disclose their inventions to VUB TechTransfer prior to any form of publication (paper, presentation, abstracts, books, workshops and conferences, technical reports, public meetings, website, …) in order for VUB Techtransfer to assess the need for protection; this is done through the so-called invention disclosure form.

Freedom-to-operate (FTO)

Prior to initiating a new line of research that may lead to the development of a new product, it is important to ensure that the commercial production, marketing and use of the new product (or process or service) does not infringe the intellectual property rights of others. A freedom to operate analysis starts with a proper description of the product. From this, an FTO begins by a search of patent literature for issued patents and obtaining a legal opinion on whether the product may be considered to be infringing these existing patents owned by others. It is important to bear in mind some of the limitations of patents, such as: limited territorial patent protection, limited duration, limited scope of protection, legal status,… If the FTO analysis reveals that there are one or more “blocking” patents one might consider the following strategies:

  • purchase or in-license the blocking patent;
  • cross licensing: exchanging license to use certain patents owned by two institutions;
  • inventing around an existing patent;
  • patent pools.

Enforcement of IP, infringement and litigation

Once a patent has been granted, the patent owner acquires the right to determine who can use his patented invention and how. This exclusive right will last for up to 20 years from the filing date provided that all maintenance and renewal fees are paid. The exclusive right has  two important consequences. Firstly, it allows the patent owner to license or sell the rights to the invention. Secondly, it allows the patent owner to sue anyone who infringes those exclusive rights. An infringement is defined as the unauthorized making, using, selling, importing or otherwise of any product or process as outlined by any one of the claims of a patented invention. It needs to be enforced through court in the country where the patent was obtained. This is called litigation and is usually very complicated, expensive, unpredictable and lengthy.

To establish whether an infringement has taken place, the patent owner or a licensee of the patent needs to prove the following:

  • that an infringing act has taken place;
  • that the infringing act has taken place after the patent application has been published;
  • that the prohibited act took place in a country where the patent has been granted;
  • that the prohibited act was in relation to the monopoly found within any one of the claims of the patent.

Need to know more?

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