In the activity of IP Management, the process of Protection of the IP is an essential stake. In a fast moving sector as ICT, it is not always easy to define the best protection strategy: patenting is a strong protection mean, but is costs and time consuming. Besides secrecy, many other types of protection (e.g. mark, copyright) also exist and offer a wide range of possibilities. The presented practices focus on issues around protection and propose some practices.

Keywords

intellectual property

By Intellectual Property (IP) we understand a legal guarantee for access to benefits from certain types of information, ideas and other intangibles. The holder of that legal guarantee usually has exclusive rights to the subject matter of IP. When speaking about IP, we refer to patents, trademarks and copyrights related to the identification, protection and commercialisation of university works and inventions.

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protection

Transferring a technology developed from public research results to industrial partners generally requires protecting first this technology in order to ensure the ownership of the intellectual property rights of the results and exercise these rights for commercial exploitation.

Protection can be achieved by several means, such as patent or secrecy. The type of protection will depend on the nature of the results (database, software, collections of biological material, patentable inventions, copyrights) but also the transfer strategy of the technology transfer office.

Software is protected by copyright and under certain circumstances, patent law. This right arises from writing the computer program. So, in principle, no formalities are needed for protection by copyright. The only difficulty is to prove the title of author of the software. It is therefore recommended to register the software source code in accredited bodies. When the software is developed in a professional context, the rights accrue to the employer, who will exploit them as he wishes. In this case, the software author is distinct from its owner.

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copyright

Copyright is a term to describe "the exclusive right to reproduce, publish and sell literary or artistic work" granted to the author or creator of this original work. Copyright does not protects ideas but their form. In that sense, copyright does not apply only to works of art and literature, but also to source codes, applications, operating systems, softwares, etc.

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patent

Industrial property right granted by a State to the first applicant (physical or legal person) of an invention. It is subject to an administrative publication and confers to its holder temporary exclusive rights operating on a given territory (national, European, international).

It does not only prevent the invention from reproduction, but also protects the rights of his or its holders in case of industrial exploitation. The patent is the safest way to protect a technology in space and time.

  • Priority or basic patent: First registration of an application for an industrial property title to protect an invention. This application can be made in one of the member nations of the Paris Convention for the Protection of Industrial Property and confers a priority right to the invention for a period of a year during which registration by third parties is void.
  • Extended patent (or patent extension): Extension of the protection of an invention to other countries than the one in which the priority patent was initially registered. This extension consists of registering a national patent in each country concerned.
  • International patent PCT (Patent Cooperation Treaty): Single procedure administered by WIPO, referring to the Washington Cooperation Treaty of 19 June 1970, which allows to file a patent application simultaneously on all or part of the countries signatories of this Convention. Filing a single international application has the same effect as filing national applications in the designated countries. The use of the PCT procedure allows to claim the date of filing the priority patent for a year in all countries of the Washington Treaty. The PCT procedure gives therefore the applicant a period of reflection before paying the different national procedures fees.
  • Improvement patent:  A patent, whose purpose is to improve a previously patented invention but which is granted to a person other than the holder of the pre-existing patent. An improvement patent is often legally dependent on the basic patent and cannot be exploited without the agreement of the holder of the latter.

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management

Managemet is about control, handling, organisation, etc. Different management approaches are necessary for the transfer of technology: innovation management, people management, management of intellectual property, management of partnerships, cluster management, etc.

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disclosure

Legal obligation of the researcher to declare to his employer that he is the author of an invention developed as part of his activity. Each organisation issues its invention disclosure form, which usually contains the list of inventors, description of the invention and potential applications.

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awareness

The performance of a public research organisation in generating innovations and transferring technology is largely influenced by the transfer awareness of researchers. The research staff who are interested in transferring results and understand this process are more likely to follow properly the disclosure and patenting procedure, anticipate and communicate with TT responsible in the right moment, be more product and market oriented or participate in choosing the transfer strategy and potential partners.

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