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TTO © 2012
Professional background 2
Work Experience, Education and Training
� MSc in Chemistry
� IP training (around the world)
� IP teaching
� 10 years of experience at TTO
� IP trends blogger
http://brevettiblog.blogspot.com/
TTO © 2012
3Introduction (1)
Most Italian universities have started to set up specific TTOs
from 2001, That year was introduced the “professor privilege”
legal status
From 2004 to 2006 about 50% of TTOs were established
TTO © 2012
4Introduction (2)
From 2004 to 2006 about 50% of TTOs were established A. Piccaluga et al. – And Yet it Does Move!’ University Patenting and Licensing in Italy; Differences and Similarities in the Management of Technology Transfer Activities at European Level - (June 28, 2009). Available at SSRN http://dx.doi.org/10.2139/ssrn.1426885
Main Common Tasks of a TTO
IPRs management is the main activity of a TTO.
• supporting the identification and protection of the research results;
• finding companies interested in the patents and signing license contracts
with them
• supporting the researcher in the process of starting and growing spin-off
companies
High quality TTO should be able to:
• Develop a quickly patent process when an invention has been identified;
• From a pool of inventions, do a selection of those that have a concrete
possibilities of exploitation by one or more licensees.
TTO © 2012
5Introduction (3)
Ways of protecting intellectual works
� Patents
� Utility models
� Industrial designs
� Trademarks
TTO © 2012
6Introduction (4)
What is a patent?
A patent is a legal title granting the right to prevent third parties
from commercially exploiting an invention without authorization
(negative monopoly right)
What is an invention?
It’s the novel solution of a technical problem
Patentability requirements
•Novelty•Inventive step•Industrial application
TTO © 2012
7Introduction (5)
Utility models
This protection does not exist in all countries.
Patents and utility models differ in the level of the inventive step
required.
A utility model consists of improvements in shape which don’t
constitute a solution of a technical problem but rather confers a
particular utility on a product, which already exists.
TTO © 2012
8Introduction (6)
Ownership of rights
Under the Italian's Industrial Property legislation, the inventor-
researcher is THE sole owner of rights, stemming from the patented
invention of which he is the inventor (art. 65).
If a university researcher decides to file a patent application as
owner, he should return to the University 50% of any revenue arising
from the exploitation of the invention.
Politecnico di Milano has issued a Policy which establishes:
a researcher may decide to transfer the ownership of the patent
application to the University;
If the University accepts to assume ownership of the patent
application, the University will pay all costs connected to filing and
prosecution and return the inventor 60% of any profits.
TTO © 2012
9Invention process @ Politecnico di Milano
According to the procedure used by Politecnico the “Invention
process” is characterized mainly by four steps:
compilation of the “Disclosure Form” (an internal document consisting an invention description)
valuation of patentability requirements and the potential
commercial value
filing of the patent application
identification of potential licensees
negotiation of a licensing agreement
TTO © 2012
10TTO functional model: IP protection (1)
First contact Meeting
DF drafting
Novelty search
Inventor contacts TTO
yes no
One of the most important step in the “Invention Process” is the drafting of a
document (Disclosure Form), which has essentially a dual purpose:
it contains a detailed description of the invention;
it constitutes a declaration of the inventors to transfer the ownership at the
University.
The detailed description of the invention allows the TTO staff to conduct an
effective novelty search.
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11
TTO’s staff shall evaluate the content of 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
TTO functional model: IP protection (2)
If the response is negative, the ownership (the patrimonial rights) will be given back
to inventors
If the response is positive, an Italian patent application will be filed
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12
PCT
6 months
Patent publication
12 months
Before thesis IT
TTO Inquest
State of the art search
Patentability search
Patentability search
Monitoring
Filing
Patentability search
12 months
When are patent searches carried out?
TTO functional model: prior art search (1)
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13
The inventors should fill in the DF with (and
without exceptions):
• type of invention to protect
• detailed description of the invention
• advantages compared to state of the art
• a list of keywords
TTO functional model: prior art search (2)
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14
• understand the invention: find out essential features
• keywords: identify a group of words (and synonyms)
• classification: select one or more classification codes corresponding to the
invention
• databases
Searching for novelty can be difficult, because patent are legal
documents and not necessarily written for ease of searching; they are
drafted to be defended in court.
A patent search can be conducted in two ways:
by words (intuitive but subjective)
by classification
TTO functional model: prior art search (3)
TTO © 2012
15TTO functional model: IP protection (3)
TTO
yes noPatent filing Attorney
TTO staff will select a patent attorney who will be responsible for drafting the
patent application
the TTO staff will send to patent attorney a detailed description of the invention
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
Inventors
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16
An application may be filed at one of the 103 Chambers of Commerce, directly at
the 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 could be disclosed to the public if
advanced accessibility has been requested by the applicant, otherwise it is
available after 18 months, as 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 €
200, within 4 months from 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 EP or other foreign extensions.
National filing
Source: G. Moradei – Patent information in Italy, “World Patent Information”, 31 (2009), p. 19 - 31
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17
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 for finding companies potentially
interested to the patent. This phase requires works closely with the inventor.
Within one year from filing date, it is necessary to decide whether the patent is
extended or not at international level.
Patent strategy @ Polimi (1)
TTO © 2012
18Patent strategy @ Polimi (2)
Demand
(optional)
IPRP
National or regional phases
Priority
IT
0 12 16 18 22 28 30
PCT filing
ISR + Written
Opinion
Publication
DEDE
EP
US
AU
PCT is basically an option for future patenting, that provides the applicant with a
further delay before deciding to apply or not.
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.
Source: D. Guellec et al – Applications, grants and the value of patent, “Economics Letters”, 69 (2000), p. 109 -
114
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