Protection of knowledge

The license

Public research generates new knowledge and is immediately disseminated through scientific publications. However, the rapid dissemination of this knowledge can prevent it from being applied to industry. Certain inventions that could be important for society (for example, a medicine) can lose their commercial value if they are published before being protected.

At the same time, universities have to make their research-related assets profitable. The coding and protection of research enables it to be subsequently transferred to the commercial environment.

An initial idea, then, is TO PROTECT BEFORE PUBLISHING.

When is it necessary to protect the results of research?

The OITT offers advice on the best time to protect results. In any case, it is always necessary to plan research projects or doctoral theses bearing in mind the possible protection and transfer of the results. An initial analysis of the results should be carried out half way through the project (for example, between the first and the second year for a three-year project) and a definitive analysis at the end of the research. In any case, always before the publication or presentation of the thesis!

Since it was created, the University of Girona has been part of the Network of Promoters of Intellectual and Industrial Property (IP), promoted by the CIDEM of the Generalitat, regional government of Catalonia.

The aim of this network is to foster the culture of patents in the university environment and, through licenses, to help bring about the commercial exploitation of any intellectual and industrial property developed by universities.

The license of the protected results

An important aspect is that protecting is not a purpose in itself, but a means of achieving an objective: transferring the protected results to the market. IIf the patent is sold to a company, this transfer will be carried out by means of an exploitation rights license agreement for the invention.

The basic idea is that it does not make sense to protect it if there are no plans to license the invention.


Protection mechanisms

How is intellectual property protected?

Unlike assets such as land, buildings and machinery, that are tangible and an be touched, seen and heard, intellectual property (products of the mind) is intangible. However, as with any other type of property, there are also property rights for these intangible assets.

In the Anglo-Saxon world, the term intellectual property encompasses both copyright and author rights and industrial property rights. This is not the case in Spain, where intellectual property refers only to author rights. Therefore, in order to cover both author rights and industrial property rights, both concepts need to be indicated.

If there are property rights, there have to be protection mechanisms. What are these mechanisms?

Protection mechanisms

  1. Industrial secret
  2. Utility models
  3. Brands and other distinctive signs
  4. Industrial models and drawings
  5. Intellectual property (the register of intellectual property or copyright)
  6. Patents
  7. Plant varieties
  8. Semiconductor products

Some mechanisms protect generic knowledge (industrial secret) and others protect inventions (patents and utility models), creations of form (models and drawings), artistic, literary and scientific creations (intellectual property) and, finally, commercial aspects (brands and distinctive signs).

Intellectual property (copyright)

Intellectual property refers to literary, artistic or scientific creations.

Intellectual property rights are acquired by the mere fact of creating the work and no type of inscription or registration is necessary to defend the rights (in this sense it is different from industrial property). But it can be necessary to notify third parties that the exploitation rights of the work are reserved. Therefore, it is registered in the Intellectual Property Register. This is advisable because, in the event of plagiarism, it is much easier to prove the property rights. Moreover, unlike patents, the procedures are simple and are not expensive.

Regulation

Intellectual property is regulated under RD 1/1996, of 12 April. Article 10 of this RD lists the creations that are covered by intellectual property rights:

Article 10: All literary, artistic or scientific original creations expressed by any means or medium, either tangible or intangible, which are currently known or which are invented in the future, are covered by intellectual property rights, and include:

  • Books, prints,, written documents, speeches and lectures, academic explanations, etc.
  • Musical compositions
  • Plays
  • Cinematographic and audiovisual works
  • Sculptures, paintings, drawings, engravings, comics, etc.
  • Projects, maps, scale models and designs of architecture and engineering
  • Graphs, maps and designs related to science in general
  • Photographic works
  • Computer programmes

The author has the exclusive right to exercise exploitation rights over their work and, especially, rights pertaining to reproduction, distribution, public communication and transformation, that may not be carried out without their authorisation.

Duration

The exploitation rights over the work will last throughout the life of the author and for 70 years after their death

Transferring the rights

The exploitation rights of a work can be transferred.

Wage-earning author

The transfer to the employer of the exploitation rights of a work created as part of an employment relationship is governed by the agreement made between the parties in the contract. If there is no written agreement, it is supposed that they belong to the employer.

Computer programs

In this case, the author of the program can be a physical person but also a legal entity.

When a worker of a company creates a computer program in the exercise of their duties, the program will be the property of the company.

Duration of the protections of the programs

  1. If the author is a physical person, the life of the author and 70 years after their death.
  2. If the author is a legal entity, 70 years, counting from the 1 January of the year following the dissemination ofthe program.

Patents

A patent is a temporary privilege of exclusive exploitation that the State grants for what "is claimed" in the patent request if this is in keeping with the law. It is, then, the right to a monopoly or the right to block others from the industrial or commercial exploitation of an invention.

This privilege has a duration of 20 years from the application date.

In exchange for the right, and with the objective of fostering the technological development of the country, the inventor has to make its invention public with the maximum of detail. As a matter of fact, the description of the patent has to be sufficient so that an expert in the matter can reproduce it.

The requirements that an invention has to fulfil in order for the patent to be granted are:

  • Novelty: the invention should not form part of the state of the art prior to the patent application submission date, which means, it cannot have been made accessible to the public in Spain or abroad through an oral or written description, through utilization or by any other means.
  • the invention should not appear to result from the state of the art in an evident way to an expert in the matter. To see if this requirement is fulfilled, all the knowledge prior to the date of the patent application that constitutes the state of the art has to be analysed to see if any expert in the matter is able to produce the invention.
  • Industrial application: it should be possible for the object of the invention to be subject to industrial exploitation. The invention has to have a practical use.

Negative right

This does not allow the owner to make, but rather prevents others from making. The patent is not, then, an authorisation or endorsement (important aspect in biotechnology: the human genome).

Type of patents

Patents can be for product, procedure or use.

Most important international treaties

  1. Paris Convention (1883)
  2. Munich Convention or European Patent Convention (1973) (Spain,1986)
  3. Patent Cooperation Treaty (PCT) (1970) (Spain, 1989)
  4. Agreement on commerce-related aspects of intellectual property rights (TRIPS or ADPIC of the GATT)

Paris Convention: it includes 140 countries (1999). A national application gives the applicant 12 months' priority in any of these countries (period permitted for deciding where the patent is wanted).

Munich Convention: with a single application, the applicant is able to patent their invention in the eighteen signatory countries. Despite being a single procedure, the applicant is awarded a different patent for each designated state. If there are more than five, it works out cheaper than doing it individually.

PCT:: with just one application, this enables the applicant to initiate the process in 121 countries (2003).

The priority

The patent application submission date is the start of a 12 month priority period at an international level, thanks to the Paris Convention. This means that the inventor has 12 months from the date of submission of a national patent to decide if they want to extend it to other countries. This time allows them to appraise the technical and economic feasibility of the invention and to analyse the different markets to decide to which countries the patent should be extended. This deadline can be extended for a further 18 months, that is, up to 30 months if the PCT route is followed after the national application route.

Ways to apply for a patent

The protection of inventions starts with the national application. To extend the patents to other countries, the international application should preferably be used.

University of Girona protection process

In the case of the University of Girona, the regulations that establish the procedure for the recognition of inventions resulting from research projects conducted by academic staff, as well as the regulation of the management of patents and any licenses that derive from them, is the Patent Regulation (approved by the Governing Board on the 17th July 1997).

When a researcher or research group has a result they wish to publish, read in a thesis or present at a conference as a communication, or which they consider to be of industrial interest, the person responsible should contact the OITT. At that moment, the OITT will begin the protection process as quickly as possible so as not to hinder the possibilities of publication, reading of thesis, etc.

The first step to obtain a patent consists in submitting a patent application. The patent application contains, in general, the title of the invention, as well as an indication of its technical area, and includes the background and a description of the invention, in clear language and with enough detail so that a person with average knowledge of the area in question can use or reproduce the invention. These descriptions are accompanied, generally, by visual materials like drawings, maps and diagrams that help to describe the invention more adequately. The application also contains several "claims", that is, information that determines the scope of the protection granted by the patent.

The legal framework

Regulation of patents of the University of Girona
Regulation of the recognition of inventions derived from the research work of academic staff from the University of Girona approved by the Board of Governors in session no. 9/98 of the 5th November 1998

Article 20 of Law 11/86 of 20 March, on patents for inventions and utility models (BOE no. 73, of 26 March 1986), establishes that the University holds the rights to any inventions produced by its academic staff as a result of the research work they undertake as a researcher.

In this sense, it is necessary to establish the procedure for recognising any inventions resulting from the research work of academic staff at the University of Girona, and also regulate the management of the patents and licenses that derive from it.

Consequently,

IT IS HEREBY AGREED THAT

One

The University of Girona owns any patents and utility models obtained through research work carried out by its academic staff, in accordance with the provisions of art.20.2 of the aforementioned Act 11/86, notwithstanding the provisions of article 5 of these regulations.

Two

1. The office of the vice-rector responsible for the research is the body responsible for determining the interests of the university in the results obtained, , assuming the management of their protection and the territories and time for which it will be responsible for their maintenance.
2. The aforementioned office of the vice-rector will be able to ask for any internal and external advice and judgements it deems pertinent.

Three

  1. When a researcher or research group obtains results that should be protected by the industrial property regulations, in any category, , it will communicate this to the Office for Research and Technological Transfer (OITT) of the University of Girona.
    The OITT will notify the office of the vice-rector responsible for the research of the protection application and will provide an accompanying report and any other documentation considered pertinent.
  2. The aforementioned office of the vice-rector will inform the researcher, within a maximum of 60 days counting from the date the application is received by the OITT, of whether the request to protect the research results has been accepted or not by the university. In the event of acceptance, the communication will specify the geographical area and time for which the university promises to maintain the rights.
  3. In case said office of the vice-rector considers there is a lack of interest in the protection of the results presented, they will transfer the request and the considerations of this protection to the Research Commission. 
  4. The Research Commission will raise a proposal at the Executive Council, which will reach a definitive agreement.

The agreement of the Executive Council will be communicated to the interested persons through the General Secretary's Office of the University.

Four

  1. If the University decides not to assume its rights over the invention, the researcher will be able to manage it and commercialize it freely.
  2. When the University hands over the rights to the researcher, the University will have the right to a share of the profits, as specified in section 6 of article 20 of Law 11/86, on patents for inventions and utility models.
  3. Whenever it is decided to transfer the rights over an invention, either to the researcher or a third party, this transfer shall be agreed by the Board of Trustees.

Five

The University of Girona's share in any profits that might arise, in application of section 3 of the above article is 20%.

Six

As a general criterion, and in relation to the patents considered to be of interest to the University, the UdG is obliged to:

a) Manage the registration of the results in the corresponding registers and to assume any costs that derive from this, at least during the world-wide priority period (12 months).
b) Look for companies interested in the protected results.
c) Negotiate the exploitation license, with the collaboration of the author, with criteria of maximum profitability.

Seven

If over the course of the 12 months following the registration of the Spanish patent application (period given for world-wide priority right) no company or person is interested in acquiring it and obtaining the usage license, the University of Girona will give the rights to the corresponding researcher/s.

Eight

1. The profits obtained for all concepts, relating to the usage license, the cession or the exploitation of the patents or utility models of inventions developed at the University, will be distributed in the following way:

a) 33% for the researcher or researchers
b) 33% for the research groups to which the researchers belong, with complementary funding for any research projects they carry out
c) 14% for the patent maintenance funds
d) 20% for the University's general funds
2. The benefits recognized for the researcher will last for as long as they remain in active employment and any other administrative situation, and during their retirement.
3. In the event that there are several inventors or authors, these will indicate in writing to the Office of Research and Technological Transfer what their share of the corresponding 33% should be. If they do not specify this, it will be distributed among them equally.

Nine

  1. When the results to be protected have been obtained in collaboration with researchers or research groups from other universities or public research centres (inter-university agreements), the researchers will say what percentage of the total corresponds to the University of Girona.
  2. The University will formalize the collaboration agreement with the other entity to regulate all aspects related to co-ownership. The distribution of the profits corresponding to the University of Girona will be carried out in accordance with the proportions indicated in the cases described above.

Ten

In the event that a member of academic staff from the University of Girona transfers to the University the intellectual property rights over their artistic, literary or scientific work, the University would act in the same way as with industrial property rights.