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Patent filing strategy at NTNU Technology Transfer AS

Publisert av Knut Jørgen Egelie .

Av: Knut Jørgen Egelie
knut.egelie@ntnu.no

The Technology IP management process is one of the more important tasks perfomed in our technology transfer projects. It is an ongoing assessment of the purpose that the TTO has the patent. Is such a patent defensively, current and alone associated with a product, or has it also a proactive and long-term purposes, for example to ensure the right to make new product developments, new markets and thereby secure institutions development possibilities and further research of the project's technological area? How do we obtain the best management process for such objectives?

In this blog post I will highlight some of the issues important in an IP management process. The work flow process and some of the elements related to IPR’s in that process drawn below illustrates this. We divide the Intellectual Property Management process into 4 stages:

1.       Technology capture

2.       Identify and describe

3.       Decisioning and communication

4.       Positioning


TechIP


 

Patents and access to funding

Protection of proprietary technology and/or regular injections of cash through royalties are important for our projects to obtain funding. Some initial funding may be available without patents, but it is rare for inventions to get first-round funding without at least one patent application in their core area. Furthermore, few new projects can survive on first-round funding and to get second-round funding, they need to have shown progress, including new patent filings and technology transfer, e.g. licensing of their patented technology. Moreover, patents significantly raise the value of a project and this is important when considering any fund-raising or sale, licensing of the project. Indeed, IPRs may be the only true assets of value owned by the project.

 

Obtaining patents

Innovative ideas generally have no automatic protection (although copyright and unregistered design right may offer some limited protection against copying). Unless they have been protected through patent filings, competitors may freely and legally use the innovative ideas of others. Indeed, someone else may patent these ideas first since most countries have a so-called ‘first to file’ system. However, by protecting IPRs they acquire real value. Researchers in early-stage projects are often unaware that they have made inventions that are patentable. For example, what may seem an obvious development to a highly qualified technical specialist, and hence considered no patentable, may not be obvious in the legal sense. Thus, researchers at the university regularly need to involve us at the TTO in evaluation of their technical progress and the review their IP possibilities.

 

When to file

Having identified potentially patentable inventions, consideration needs to be given to whether a patent application should be filed and, if so, when. Usually the answers to these questions are ‘yes’ and ‘as soon as possible’. However, it is worth mentioning that sometimes filing a patent application is not the best course of action, e.g. where the project only needs freedom of use or where it would be very difficult to detect infringement and a patent application may serve only to give away information to competitors which would be better kept as a trade secret. As a general rule a patent application should be filed if an invention is patentable and commercially relevant. Deciding the right time to file a patent application requires careful consideration. Late filing allows the project to carry out more R&D and should permit a broader and stronger patent. However, the project risks prior publication of relevant prior art anticipating their patent. Early filing minimizes the risk of anticipation, but ultimately there is often some sacrifice in terms of scope of protection and strength of the patent. Thus early filing versus late filing must be weighed upon a case by case basis.

But, have we gotten that far in the process that a filing decision has been made then we most often follow one of the twomost common ways to proceed with the application:


PCT1


 

Anticipating the costs of patent filings

Once a decision to file a patent application is made, the costs are predictable with what may seem to many a surprising degree of precision. Before setting out the likely costs, however, it is necessary to provide some background to the different patent filing strategies. For a patent to be valid, the invention must be new. By filing a patent application, the invention establishes a priority date. Provided the invention can keep the priority date, nothing disclosed after that date can prejudice the validity of the patent (there is an exception for earlier filed patent applications published after the priority date). The priority date is also valid in most countries in the world, provided foreign patent applications are filed within 12 months of the priority date. The appropriate patent filing strategy will depend on commercial strategy and cash flow. A balance must be struck between cost and potential reward. Early grant of patents is good for obtaining funding and licensing.

 

To give you an idea of the international filing strategy and timeline a have put up the PCT route below:

PCT2


 

Summarized our focus on IP management is divided into 5 main areas of importance:

 

·         Legal IP rights that are possible to achieve for an idea - such as the ability to obtain patents, distribution of ownership, patent breadth, ability to enforce IPR case of any disputes.

 

·         Technological IP rating for a reported idea - how strong IPR may be obtained for the invention from patent technical evaluation. How unique is idea, is highly dependent on the license, is "proof of concept" performed superiority in relation to existing technology. A FTO may reveal the technological IP strength.

 

·         Market potential for IPR - where , e.g., most appropriate geographic protect idea according to market strategy with a patent , potential licensees localized by means of IPR databases (e.g. Thomson Innovation from Delphion), are dependent on special permits in the local market to obtain IPR protection - for example, Biotechnology Law in Norway, how are the local political framework and legislation, how technology lifetime of market versus development time and how long it takes to obtain a patent, competing/substituting products with IPR, the market will pay for invest in dependence on the IPR.

 

·         IPR costs - what would IPR in terms of for example patent protection and IP analyzes and assessments at any time cost, how much it will cost to continue and maintain a patent application, what is the risk of any infringements , is a possible patent application dependent on in-licensing other IPR to be used. An overview of the standard costs for patenting process

 

·         IP Strategy – this is an ongoing assessment of the purpose TTO has the patent. Is such a patent defensively, current and alone associated with a product, or has it also a proactive and long-term purposes, for example to ensure the right to make new product developments, new markets and thereby secure institutions propulsion possibilities and further research the project's technological area? How many countries should seek patent, seek multiple patents must invention secured in more ways than a patent? Should we cooperate with owners of complementary IP etc.

Knut J. Egelie
PhD candidate, NTNU Technology Transfer As and NTNU Institute of Biology