ip

5 things to keep in mind when protecting your IP

by Riccardo Maistrello

As many know, Unismart is the wholly-owned subsidiary of the University of Padova aiming at bridging the gap between University and Industry, enhancing technology transfer and providing innovation consulting services.

At the core of our business lies the IP valorization: Unismart was founded with the main objective of managing the patent portfolio of the University, making it more attractive and accessible, and licensing the most promising assets to third-parties in accordance with international best practices and gold standards.

In this first year, some key results were achieved.

In May 2017 we successfully licensed the patent “Method to continuously monitor cow’s behaviour and rumen motility”. A group of researchers from the Department of Animal Medicine, Production and Health (MAPS) of the University of Padova found out that by applying a 3-axis accelerometer to the hip of a cow, this could collect a wide variety of data which could be fed into a specifically-designed algorithm able to identify critical situations which require the vet intervention. Anticipating medical intervention of 3 to 6 days can produce significant economic savings for mid-to-large farms and it also spares the livestock from the use of drugs.

A couple of months ago, we successfully licensed another patent regarding the use of “Inhibitors of Monoamine Oxidases for the treatment of muscular dystrophies and cardiac diseases”. A group of researchers from the departments of Biomedical Sciences and Molecular Medicine demonstrated that the use of drug compounds from the class of the MAO inhibitors protects myoblasts and myotubes from patients affected by Duchenne, the most common type of muscular dystrophy, a disease characterized by progressive weakness and degeneration of the skeletal muscles.

But besides the above-mentioned cases, at Unismart we work with many other patents from different research groups on a daily basis. Actually, we don’t simply handle granted patents, which are a minority inside the IP portfolio and which -being already “granted” by the international authorities – normally present no criticalities.

The fun part begins when working with invention disclosures (meaning researchers ask the University to step in and support the patent filing) and patent applications (meaning authors have simply done the first administrative step of the process by filing their application); when answering the objections the international reviewers very often have about the claims and the contents of patent applications; when dealing with patent term adjustments, extensions, nationalization into different markets, etc.

In doing this Unismart works closely with the Technology Transfer Office of the University, directed by Ileana Borrelli – a lawyer, and other IP consultants. While they bring in their knowledge and experience on IP law and internal procedures, Unismart is requested to show commercial acumen and point the way to the market.

Based on our daily experience, we thought of a piece talking of obstacles and pain points we often encounter… and why they should be avoided.

5 things to keep in mind when protecting your IP

AN ITALIAN PATENT IS RARELY ENOUGH

Italy is a beautiful country with great food, friendly people and excellent weather but when it comes to protecting your IP an Italian patent alone will rarely do.

It still happens some researchers come to us requesting we commercialize their invention, which is protected only in our beautiful peninsula. But Italy is a small and static economy in the world, where fewer and fewer companies decide to manufacture and even fewer enterprises decide to choose as their primary market. An Italian patent only will rarely be enough if inventors want to find a strong industrial partner and scale up their endeavor globally.

A BIT OF SECRECY, PLEASE

While it is true that, from a strategic point of view, the choice of patenting implies that the invention will sooner or later go public, it is also true that obtaining a patent can take years and not all applications are granted.

Given that before a patent application is filed no information at all should be disclosed publicly, we advise researchers to keep using caution even when the application has been filed.

Many things could still happen, e.g. the search report from the relevant international authority could highlight prior existing art or refute other key characteristics the technology must possess in order to be patented: in these cases, the application could be turned down.

Until the patent is granted caution is strongly advised and information about the invention should be shared only with clearly-identified and qualified stakeholders under well-structured NDAs (non-disclosure agreements).

DO NOT RESUSCITATE

Filing a patent should be a single, well-articulated process. Since it is an important decision inventors take, they should be well-advised by specialists before they start and ready to commit to achieving the best final result.

In some cases, Unismart is called to take action on patents which have a troubled history: at some point they were neglected or dropped, e.g. inventors omitted to reply to the objections made by the international reviewers, stopped paying the due fees, skipped nationalization in key countries, etc.

The patent filing process follows a clear and well-defined path, with solid rules, precise deadlines and mandatory steps to complete in order for the patent to be granted.

A stop-and-go approach doesn’t work, second thoughts only waste precious time and – above everything – what is done cannot be undone.

If something goes wrong and a patent application is neglected and left to lie idle it won’t be possible to resuscitate it later on.

Be ready to go all the way through it or avoid even starting the process.

GOOD STRATEGY AND GOOD PARTNERS

As said, once the patenting process kicks off there’s no way back and the clock keeps counting. In general terms, supposing inventors opt for a local application followed by a PCT extension, inventors will have 30 months to decide in which countries to nationalize their invention. This is not a great amount of time, considering the fundamental search report will be ready after several months.

Planning beforehand is key to success and inventors must work at a real roadmap to set targets and decide how to get there: which companies and industrial partners will need to be contacted? which countries represents the most relevant markets for the product? how will IP be commercialized when patent is granted? who will take care of the commercial work in a team of scientists and technologists? are other professionals (IP consultants, brokers) needed and at what point?

All these questions should be seriously analyzed and answered when deciding to file a patent request.

TALK SCIENCE TO SCIENTISTS, BUSINESS TO BUSINESSMEN

As discussed in recent article, it’s important to understand the role scientists and businessmen play in the process and how they should cover different sides of it.

In every step of the process, from writing the claims to choosing the right markets, it is not only the science behind the invention that matters but there are plenty of commercial considerations and strategic decisions to make.

Industrial analysis must be done as well, since the European Patent Office lists the “industrial applicability” among the 3 key requirements a patent application must possess.

Having such skills in the patenting team can make a huge difference and, especially when it comes to big multidisciplinary groups of scientists from different departments and sometimes Universities, identifying a lead investigator to become the main-point-of-contact for external stakeholders can speed up interactions with 3rd parties and make the entire process much more efficient.

Willing to learn more about the IP portfolio Unismart manages for the University of Padova? Check out our online patent bookshelf (libreria brevetti online).

Brevetti ed IP

Thanks to dr. Andrea Berti from University of Padova for reviewing this article. The views and opinions expressed in this article are those of the author and do not necessarily reflect the official position of Unismart and/or the University of Padova. If you have any comments please do contact us: info@unismart.it