PATENTING AND COMMERCIALISATION
Procedures for reporting the result of intellectual work and patenting.
What is commercialisation?
The commercialisation of research results includes the activities that consist specifically of:
- assessing the potential market value and profitability of intellectual property results;
- creating business models for using the results of intellectual works;
- developing legal and economic mechanisms that will result in, among others, selling, using or implementing the results of intellectual works in the economy.
The results of intellectual work are an essential link in entrepreneurship development. They also allow the existing companies to grow through transforming innovations into new products. For determining the choice of the commercialisation pathway, and most importantly, the ability of intellectual work results to be commercialised, the nature of the results must be appropriately defined.
FORMS OF THE COMMERCIALISATION OF ACADEMICS’ INTELLECTUAL WORK RESULTS
For the purpose of direct commercialisation, the University may establish a special unit – technology transfer centre and – if there is no such a unit – the management of rights to the results or to the know-how, in terms of direct commercialisation, may be entrusted to a special purpose company.
At the University of Wrocław, the management of rights to the results or know-how for direct commercialisation has been entrusted to the Centre for Technology Transfer.
GLOSSARY OF BASIC CONCEPTS
invention – the legislator does not give a definition of an invention but only indicates what an invention must be in order to become an object of protection, for which the Patent Office grants exclusive rights (patent). It is such an invention that:
- is new (it is not part of the state of technology);
- it has an inventive level (it is not obvious to the expert from the state of technology);
- is industrially applicable (the invention may be used to produce a product or exploit a method in any industrial activity), regardless of the field of technology.
[Pursuant to Articles 24-30 of the Act on Industrial Property Law of 30 June 2000]
The legislator has also identified a special invention – a biotechnological invention and defined its characteristics in Articles 931-937.
Note: Inventions do not include, among others, discoveries, scientific theories, mathematical methods, plans, principles and methods relating to mental or business activities and games, programs for digital machines.
utility model – it is a solution of technical nature: new and useful (allowing to achieve a purpose of practical importance in the manufacture or use of products), concerning the shape, construction or composition of an object of durable form. The protection right is granted for the utility model.
[Pursuant to Articles 94-101 of the Act on Industrial Property Law of 30 June 2000]
industrial design – it is the form of a product or a part thereof (any industrially manufactured or handicraft item, including, in particular, packaging, graphic symbols and typographic typefaces but excluding computer programs); it is new and has an individual character, given to it, in particular, by the features of lines, contours, shapes, colours, texture or material of the product and by its ornamentation. The right of registration is granted for industrial design.
[Pursuant to Articles 102-119 of the Act on Industrial Property Law of 30 June 2000]
development work – it is the activity carried out to design and create changed, improved or new products, processes or services and to plan production. It includes using, acquiring, combining, shaping the knowledge and skills currently available, including information technology tools or software. However, these activities do not include routine and periodic changes made to them even if such changes are improvements.
[Pursuant to Article 4, Paragraph 3 of the Act on Higher Education and Science Law of 20 July 2018]
know-how – it is identified expertise and a set of experiences and practical information on technology, production process and organisation, management and financing concerning a specific product or tool. This information is confidential and, in the future, may be a trade secret.
[based on the definition adopted in Commission Regulation (EU) No 316/2014 of 21 March 2014 on the application of Article 101, Paragraph 3 of the Treaty on the Functioning of the European Union to categories of technology transfer agreements]
Depending on the potential of the innovation, its readiness for implementation or the business model adopted, the process of commercialising the academics’ intellectual work results can take two different formal paths.
How to report the result of intellectual work
Faculty Commercialisation Coordinators
The role of Commercialisation Coordinators is to support the information flow and document circulation process. They cooperate with unit managers, CTTs and researchers. They control the processes of intellectual property protection and commercialization within their Faculty. They take care of the exchange of experiences and good practices especially between the Faculties.
How the patent procedure works
Frequently asked questions
I have developed the result of the scientific activity, what should I do?
Report the result of the scientific activity to the Centre for Technology Transfer on the form. The employee will help you assess whether it is reasonable to seek legal protection and guide you through the patent application process. They will also help you assess the commercialisation opportunities of your solution and handle all the paperwork.
What is a patent and what are the benefits of receiving it?
A patent is a temporary exclusive right granted to an invention or process for profit. A patent protects your rights as the creator against the unlawful use of the solution and theft by competitors. Patents can also be sold or licensed. It is worth mentioning that you can obtain an exclusive right not only for the invention but also for the topographies of integrated circuits, utility models, industrial designs or trademarks.
Who is the creator and who owns the invention?
The owner of the rights to the result of the scientific activity is the University of Wrocław and it is the University that decides about the legitimacy of its protection and the process of its commercialisation. The creator of an invention is a person who is the creator or co-creator of the result of the scientific activity. The creator’s name appears on all documents and the patent application. The creator is entitled to remuneration in the event of commercialisation.
The invention of which I am a co-inventor was developed in collaboration with an outside entity. Who is the owner?
In such a case, the shares of co-right holders (owners) in the rights to the invention should be specified in a joint right contract concluded between all entities involved in the invention. If the University has not entered into a contract with these other entities governing these issues prior to the creation of the invention, it will be necessary to sort out the formal legal status of the invention and sign a joint right contract after the invention has already been created. A joint right contract should indicate the authors and their creative shares in the creation of the invention, the joint owners of the invention and their shares of ownership in the invention as well as other rights and obligations of the parties. The employee of the Centre for Technology Transfer will help set the terms and prepare such a contract.
What is the role of the Centre for Technology Transfer in the process of applying for patent protection?
Based on the completed form, the Centre for Technology Transfer prepares, if needed, all contracts governing intellectual property rights and obtains all required opinions and approval from the Vice-Rector for Research to apply for patent protection and commercialisation. Then the Centre for Technology Transfer submits all necessary documents to the Office of the Patent Attorney.
What to do to patent an invention?
Report the result of the scientific activity to the Centre for Technology Transfer on the form. The employees will check your application for completeness and help you complete it. Provide the Patent Attorney’s Office with a description of the invention and the patent claims.
What documents are required to apply for patent protection?
The employee of the Centre for Technology Transfer submits the scientific activity result application to Results, the contracts governing the creative contribution and ownership of rights and the approval of the Vice-Rector for Research to grant patent protection to the invention to the Patent Attorney’s Office. The creator must include a patent description and patent claims.
Can scientific results be published before filing an application with the Patent Office?
No. Publications in journals, poster sessions, conference talks, oral presentations, abstracts, etc. may be considered disclosures and may be an obstacle when seeking patent protection. You can publish the results of your research the day after you file your application with the Patent Office. The Patent Attorney’s Office or the Centre for Technology Transfer will notify you when it is safe to publish.
Does filing an application with the Patent Office prevent the publication of the scientific results?
No. Scientific results may be published but only after filing an application with the Patent Office. Remember that the patent application process can take several weeks. The Patent Attorney’s Office or the Cen for Technology Transfer will notify you when it is safe to publish.
How long does it take to get a patent?
It takes up to several weeks to complete the documents and file the application with the Patent Office. From the moment you apply, you can publish your research findings and present them at conferences. The decision to grant a patent takes several years but during that time, we can establish partnerships with outside entities regarding commercialisation. The grant of patent protection begins on the filing date. So, your invention is protected as soon as you report it.
When can we start commercialising the scientific result?
Whether or not your scientific activity result may be the subject of exclusive rights and you are seeking legal protection, commercialisation can begin with its reporting to the Centre for Technology Transfer.
How to commercialise scientific results?
The commercialisation of scientific results is handled by the Centre for Technology Transfer. Report the result of your scientific activity on the form even if you see no possibility of seeking legal protection. The employee of the Centre for Technology Transfer will help you assess the commercialisation opportunities of your solution, find buyers, negotiate terms and prepare appropriate contracts. Commercialisation can be done by selling the rights to the scientific result or licensing its use.
Can only inventions that have received legal protection be commercialised?
No. If you have already published the results of your research or do not see an opportunity to apply for legal protection and your invention has a practical application, you can commercialise it. The employee of the Centre for Technology Transfer will help you assess the commercialisation opportunities of your solution, find buyers, negotiate terms and prepare appropriate contracts.